24th April 2019, Guidelines for Administrative Cases of Trademark Authorization and Conformation in Beijing Higher People’s Court, Article 19.13 “Recognition of several trademarks under one registrant” “A registrant of a trademark in dispute has multiple registered trademarks. Although there are only slight differences between the practical use of the trademark and the trademark in dispute, if it can be determined that the use is against other trademarks that has registered, the claim to maintain the trademark in dispute may be not supported.” Although this article has provided a clear guidance for the identification of the behavior of one person and multiple bids in the trademark withdrawal for non-use in consecutive three years, the subtle differences mentioned in this article may be recognized differently in specific cases. Th author believes that at this time, consideration and judgement should be made based on the distinctive identification of trademarks. Please see the analysis of following 2 cases: 

CASE 1. In the administrative judgement with No. (2016) Jing 73 Xing Chu 2959, Beijing Intellectual Property Court held that contracts and photos of goods provided by Shanghai Chenming Food Industry Co., Ltd., the owner of the disputed trademark, all showed “上好佳美顿milton (Shang hao jia mei dun in pinyin)”, “美顿 (mei dun in Pinyin)” or “milton”, however, the word trademark “美顿 (mei dun in Pinyin)” (i.e. the trademark “” under No. 4984081 under Class 30) is under the name of the owner, as well as “Milton and device” (i.e. the trademark “” under No. 23175892 under Class 30), these 2 trademarks are different from the part of distinctiveness of the disputed trademark under No. 4984083 “” (Milton and device) under Class 30, in conclusion, the evidence is not enough to prove that the disputed trademark was practically used on the designated goods during the specified period and the trademark was eventually withdrawn. 

Case 2: in the decision of review of revocation under No. 226059 Shang Ping Zi [2019], the application of the review, that is, the applicant of withdrawal of non-use for three years, claimed that, besides the reviewed trademark (No. 813095under Class 32), the respondent also applied for registering the trademark No. 6977833 “”under Class 32, “金麦” (Jin Mai in Pinyin), “金麦香” (Jin Mai Xiang in Pinyin) and “金麦箱啤” (Jin Mai Xiang Pi in Pinyin) invoices provided by the respondent, showed on the invoices provided by the respondent, it does not seem to refer to the trademark being reviewed in the case, but the trademark “金麦” (Jin Mai in Pinyin) with No. 6977833 under Class 32. However, after the trial, the State Intellectual Property Office held that although there were slight differences between the reviewed trademark “金麦goldbrew” in this case and the practical use of the trademark “金麦” (Jin Mai in Pinyin), its significant characteristics were not changed. Therefore, the respondent’s use of the trademark “金麦” (Jin Mai in Pinyin) on the goods of beer could be regarded s the use of the reviewed trademark. Thus, the review trademark has been sustained. 

At the first view, the cases of these two cases are basically similar, both of which are withdrawal cases of non-use for three consecutive three years. There are certain differences between marks and trademarks involved in the practical use evidence, and the trademark right owners have multiple series of trademarks under their names, but there are different results of revocation and maintenance. Both Beijing Intellectual Property Court and State Intellectual Property Office mentioned that a word was “significant”. In case 1, there was a distinction in the part of significant recognition, while in Case 2, there was a slight difference, but its significant characteristics were not changed. Author further explores the case’s result to realize that although trademark law stipulated in Article 8 “alphanumeric text graphics, three-dimension logos, combination of colours and sound signs, and the combination of the above elements, all can apply for registration as trademarks”, however, the distinctiveness of characters, devices and letters in the overall design of trademarks varies from strength to strength. The author held that if other factors are not taken into account, the significances of Chinese characters is generally stronger than that of letters, which is determined by the fact that the native language of the relevant public in the Chinese field is Chinese, and the recognition capacity of Chinese characters is obviously stronger. Therefore, basically the same cases above have different results, which contains an internal logic that Chinese characters are more significant that letters. Please ignore the difference in the identification organization here, and the author has not found a more proper case. In general, Beijing Intellectual Property Court views evidence more rigorously than SIPO. Otherwise, we cannot understand that, comparing with the actual using trademark “金麦” (Jin Mai in Pinyin), although the trademark “goldbrew金麦” (Jin Mai in Pinyin) with No. 813095 occupies large part of English, still considered to be unchanged in its significant part. 

It can be seen that because of the diversity of trademark factors and the complexity of trademark, it is of great significance to distinguish the distinctive part of trademarks in the practice of trademark examination. If there is no longer-term accumulation of proper experience, it is very likely to have some misunderstanding of the trademark examination and trial situation. After all, purely subjective judgement has no meaning for the practice of censorship, whether as an agent or an examiner, the goal should be to pursue objective judgement that can be consistent with the examiners, the judges or even larger groups. The judgement of the distinctively identificable parts of the most common English trademarks, Chinese trademarks, device trademarks and other types of combined trademarks shall be applied to each practical case. Only when a trademark has identified a significant part, can it carry out a more accurate and perfect retrieval of its earlier similar trademark, give clients more accurate suggestions and guarantee before submitting applications for examination, and be closer to the direction of examination practice. In fact, the conspicuous recognition part is the part that can be best reflect the reading and recognition effect of a trademark and is also the first impression of the public on a trademark. The accurate positioning of significant parts will help agents and examiners quickly eliminate interference from other elements and ensures logical consistency in the analysis of the final decision. If each element of Chinese, English and device in Chinese trademark, English trademark and device trademark is separated as an independent part, if we check Chinese, English and device in a simple way, we may get into the mistake of the same proportion of each element. The more correct and reasonable way is to make a comprehensive judgement from the overall perspective, combining the national conditions, according to the relevance of the position of the text and the device, as well as the strength of the significance of the device.