For the judgement on the similarity of trademarks, it is not an issue of the intuition, in the administrative and judicial practices, it has specific judging rules and methods, the considerations are numerous and complex, as per Article 16 of Opinions of the Supreme People’s Court on Several Issues regarding the trial of Administrative Cases concerning Trademark Authorization and Confirmation, “in determining whether a trademark is similar or not, the people’s court should not only consider the elements of the trademark and its overall similarity, but also consider the distinctiveness of the relevant trademark and the degree of relevance of the commodities used in its popularity, and take whether it is easy to cause confusion as the judgement criterion.” The following is the consideration on the distinctiveness factor in the examination of trademark similarity in the rejection review procedures through a group of successful cases presented by us. 

CASE: Trademark Rejection Review Decision on the trademark “EDEN SPRINGS and device” with number 48441264 under Shang Ping Zi [2021] No. 0000121450 (already came into effect)

The trademark “  " with number 48441264 applied by our client GATT WINES PTY LTD for the registration in Class 33 was rejected by China National Intellectual Property Administration on the grouds that it was similar to 3 prior cited trademarks below, we filed the application for reviewing the rejection of tradmeark on behalf of the client after providing detailed analysis and comments for the client. China National Intelletual Property Administration has already made decision after the examination, they held that there are some differences between the applied-for trademeark and cited tradmraks in terms of consitutions and overall appearance. Trademarks mentioned above did not consituted similairty in terms of the use on the similar goods. Hence, the applie-for tradmark should be granted for the initial approval. 

Comparison of the Applied-for Trademark and Cited Trademarks

In the procedure of reviewing the case, from the following three levels and perspectives, the agent argues that the applied-for trademark and the cited trademarks 1 to 3 did not constitute similarity, and they can coexist, 

Level l: The applied-for trademark and cited trademarks contain devices parts designed from grape or maple leaves, and such kind of devise are familiar to the public, also, it is also a common design element of business logo on goods such as Class 33 wine designated for use. It belongs to the general design or elements of the goods or industry and should not be monopolized by any subject, furthermore, as a general element representing the characteristics of raw materials, it has weak distinctiveness function and does not play a key role in identifying the source of goods in trademarks. 

Level II: Although the marks of both parties use the same or similar designs, there are obvious differences in specific design details, appearance, design concept, overall and visual effect. 

Level III: The trademarks of both parties are combinations with words and devices. Apart from the device, the distinctive recognition text of each party is obviously different, resulting in different text composition of the whole trademark, such as sound, pronunciation and meaning. Although the judgement of trademark similarity adopts the method of overall comparison, the distinctiveness part will affect the overall of the trademarks, so the distinctiveness part is also one of the methods to judge the trademark similarity. Finally, the conclusion is that the overall difference between two sides is obvious. 

At last, as the agent conducted a systematic and detailed analysis of the case, China National Intelletual Property Administration granted to annouce the preliminary examination to the application. 

Analysis to the Case

The reason the trademark application in the above case was rejected by China National Intelletual Property Administration in the examination stage is that the judgement on the tradmark similarity adopts separate examinations on the devices and texts. However, the support to the non-similarity between the applied-for trademark and cited tradmarks from the TRAB in the stage of examination should consider a lot of factors, first of all, there are obvious differnecnes between two text elements, and the text elements play a great role in meaning and sound functions, can help the public to distinguish them well. Seconldy, the graphical elements of the two sides are indeed differenct in the ovreall impression of expression and visual effect. Futhermore, there is alos a consideration that cannot be ignored in this case that the device part of the applied-for tradmark and cited tradamrk 2 actually has a close connection with the goods desiganted for use,i.e. Class 33 wine goods, it is a commonly used design element on such kind of goods, with low distinctivness, moreover, the maple leaf in cited tradmark 1 and 3 refers to things that objectively exist in nature and are well known to the people, but did not anything originally, and it is similar to grape leaf patter, the significance is low, so it can not give strong protection, if there is a certain difference between the two devices, the commom element with weak distinctiveness should be allowed to coexist with each other, and the judgement criteria on similarity should be properly relaxed. 

The practical value of the trademark lies in distinguishing the source of goods or services, rather than letting the trademark owner simply monopolizes the specific symbol and mark. For trademarks in the common vocabularies or things in the industry or the public domain, should consider the limitation of the socially public resources, communism and limitation of creative space, properly balance the trademark right of the prior trademark registrant and interests for other social subject to choose trademark and logos from the social public resources and to establish good will, the judgement of the similarity should be relaxed properly, private rights and social public interests should be taken into accounts to prevent “symbolic enclosure”.

It should be noted that trademark distinctiveness is not the same as originality, and it is not because a graphic points to a thing objectively existing in the nature or a word trademark is an inherent vocabulary with low originality to recognize the trademark is lack of distinctiveness, it is necessary to make a comprehensive judgment based on the designated goods, the industry to which the trademark belongs, the connection between the trademark and the commodity, and through the distinctiveness gained via the use. The judgement criterion of similarity should be related properly for the part that lacks distinctiveness. 

Summing up the above, for the judgement of trademark similarity, the consideration of distinctiveness factor also reflects the balance between the public interests and private rights in the field of trademark law.