For a long time, the first word of a trademark serves as the standard to judge the similarity of trademarks. Although this standard makes some sense, it has also become an opportunistic way for some people. This case is an example. Recently, we acted for Maikaomei company 迈考美to file the application for opposition against No. 41990411 trademark “眛好美” (Mei Hao Mei in Pinyin) to China National Intellectual Property Administration. China National Intellectual Property Administration recently issued the opposition ruling in this case, which supported our side’s claim on the opposition and decided to refuse the registration of the trademark. 

Brief Introduction to the Case

Wuhan San Chuang Food Co., Ltd. (hereinafter referred to as person challenged) applied for registering No. 41990411 trademark “眛好美” (Mei Hao Mei in Pinyin) (hereinafter referred to as the disputed trademark) on service Class 35 “Business Information”. This application has been granted the preliminary examination publication. Also, the trademark has been applied for registering on Class 29 and 30 by the person challenged. The opponent in this case has filed opposition application against on them. 

Maikaomei company 迈考美 and its subsidiary Shanghai McCormick Co., Ltd. (i.e. the opponent of this case) filed the application for opposition against the disputed trademark based on its’ prior trademarks No. 8985518 and No. 8985530 “味好美” (Wei Hao Mei in Pinyin) (hereinafter referred to as cited trademarks) on Class 30. 

Verdict

China National Intellectual Property Administration held that, firstly, the designated service of the disputed trademark is different from the approved service of the cited trademarks in terms of functions, purpose and service contents, two sides didn’t constitute similar trademarks on the similar services. However, the evidence regarding the reputation filed by the opponent is sufficient to prove the opponent’s reputation on the goods “flavouring”. While the person challenged and the opponent belong to the same sector, the former shall acknowledge the opponent’s trademark, however, the former still applied for registering the words that similar to the opponent’s trademark. The registration of the disputed trademark easily misleads the public, and to lead potential damage to the opponent’s interest. Hence, the application for the registration by the person challenged has the intention to copy and imitate another person’s trademark, this behavior violates the legislative spirit of the trademark law on the prohibition of obtaining the trademark registration by fraudulent means or other improper ways, disturbs the normal trademark registration order, also damages fair market competition. Hence, China National Intellectual Property Administration finally refused to grant the registration of the disputed trademark. 

Analysis to the Case

In this case, the disputed trademark’s designated service did not constitute similarity with the approved services of the opponent’s cited trademarks, in other words, two sides’ trademarks did not constitute similarity in terms of the use on similar/identical services. Generally, the disputed trademark will be granted for the registration. However, the particularity of this case lies in the strong malevolence of the person challenged, mainly fall into 2 points, i.e. 1. The dispute trademark is highly similar to the cited trademarks, although the initial word is slightly different, the trademark as a whole is quite similar. 2. The person challenged and the opponent belong to the same section, the former should acknowledge the latter, however, the former still applied for registering the trademark “眛好美” (Mei Hao Mei in Pinyin) that is quite similar to the opponent’s trademark with bad intention. Hence, the disputed trademark shall not be granted for the registration. Additionally, Trademark Office maintained the opposition filed by the opponent against the trademark that applied by the person challenged on Class 29 and 30. 

Generally, the similarity of trademarks and goods serves as the criterion for examiners’ judgement in oppositions cases. However, in this case, the malevolence of the person challenged is also one of the main points to be considered in the examination of opposition of trademarks. 

In future right protection cases regarding the opposition, if it is found that the person challenged has obvious acts of malicious trademark registration, it may actively clarity the status to China National Intellectual Property Administration, also, taking this case as a successfully previous case of rights protection to protect the opponent’s prior right.