Brief introduction to the case

VOLK OPTICAL, INC., the opponent has filed opposition against the trademark with No. 27195748 “福科VOLK” (Fu Ke in Pinyin) on Class 10, which was applied for the registration by the person challenged, Shanghai Weishi Medical Equipment Co., Ltd. As per the examination, China National Intellectual Property Administration has decided to refuse the registration of the disputed trademark. 

China National Intellectual Property Administration held that, the evidence, i.e. business license, advertising promotion documents, sales revenue statistics, honour certificates and media reports, which were provided by the opponent, can prove that “VOLK福科” (Fu Ke in Pinyin) is the short name of the opponent’s enterprise name that has put into actual use, moreover, this trademark has enjoyed reputation and influence in China before the application for registration of the disputed trademark, also, it is known to the relevant public. The Chinese and English word “VOLK” in the disputed trademark is totally identical to the opponent’s short name “VOLK”. Therefore, the registration and use of the disputed trademark can easily mislead the origin of the goods among the public, furthermore, infringe the prior right of the enterprise name of the opponent. 

Analysis to the case

As per ‘Trademarks Examination and Review Standard’, the applicable requirements for infringement of prior right of the enterprise name are as follows: (1) others have priorly registered or used the enterprise name before the application for the registration of the disputed trademark. (2) Such kind of enterprise name has some reputation among Chinese public. (3) The registration and use of the disputed trademark is easily to mislead the public, furthermore, this may damage the interest of the right holder of the prior enterprise name. As per stipulations in the ‘Trademarks Examination and Review Standard’ has been implemented since January 2022, ‘in principle, when the disputed trademark and the prior enterprise name are identical or similar, they are easily to cause confusion, however, in the respective cases, judgement on similarity of the disputed trademark and the enterprise name should be based on the originality and reputation of the prior enterprise name. In principle, the protection of the prior trade name right shall be limited to the goods or services that are identical or similar to those actually operated by the trade name owner, but in individual cases, the protection shall be based on the originality and popularity of the prior trade name, as well as the goods or services of both parties. The degree of association of the service, which specifically determines the scope of protection of the prior font size.

In the opposition above, the English character “VOLK” and Chinese “福科” (Fu Ke in Pinyin) of the disputed trademark are opponent’s Chinese and English trade name separately. The opponent filed evidence for use in China in the opposition grounds, it is enough to prove that goods with “VOLK” has some reputation in China before the date of application for the registration of the disputed trademark. The disputed trademark is totally identical with the opponent’s trade name, based on the reputation of the opponent’s trade name, in this case, it is determined directly that the confusion can be posed. The disputed trademark’s designated goods ‘Surgical instruments and instruments; Medical instruments and instruments; Ophthalmic examination equipment; Ophthalmoscopes, Ophthalmic instruments; Medical ultrasonic instruments; Medical lasers; Artificial surgical implants’ are identical or similar to the opponent’s goods, as a result, the application and registration of the disputed trademark infringed the opponent’s trade name right. 

Furthermore, the subjective maliciousness of the person challenged is obvious. In this case, before the date of the application for the registration of the disputed trademark, the opponent has applied for the trademark ‘福科VOLK’ (Fu Ke in Pinyin) that totally identical with the disputed trademark on 23rd May 2011, the opponent has filed the declaration of invalidation against it, China National Intellectual Property Administration identified that the opponent’s trade name right has been infringed, the verdict of invalidation has been made. However, the person challenged known well the disputed trademark will not be approved for the registration, the person challenged has filed the application for the registration of trademark ‘福科VOLK’ (Fu Ke in Pinyin) on the same goods again in 16th November 2011, now the examination is pending. It can be seen from the repeated application of trademark by the person challenged that such kind of application for trademark registration is a malicious application. The writer held that, in such kind of case, if a particular person’s trade name right has been identified to be infringed in the declaration of invalidation or opposition verdict, China National Intellectual Property Administration may consider procedural precedence and directly reject the registration in the review. This not only saves the administrative resources, also saves the cost of the third party.