Trademark opposition case related to the challenged person’s trademark‘’ with registered number 46180146, the registration of the disputed trademark shall be refused. 

Introduction to the case

CERVECERIA MODELO DE MEXICO，S.DE R.L. DE C.V. (hereinafter referred to as Modelo company) has filed opposition against the registration of the trademark ‘Tailuona泰罗娜’ (Chinese characters in pinyin are Tai Luo Na) with number 46180146 on goods ‘Beer; Mineral Water (beverage)’ under Class 32 that applied by Yan Liu Shan, based on Modelo company’s prior registered trademarks ‘科罗娜’ (Chinese in pinyin Ke Luo Na), ‘CORONA’.

China National Intellectual Property Administration held that: 

There are some differences between the disputed trademark and the opponent’s cited prior Chinese trademark in terms of composition, sounds and overall appearance, trademarks didn’t constitute similarity on similar goods. However, it is slightly different from the opponent’s cited prior English trademark it terms of letter composition, sounds and overall visual effects, and then, trademarks have constituted similarity on similar goods, furthermore, the coexistence and use are likely to cause misidentification among the consumers. Thus, the registration of the disputed trademark has been refused as per Article 30, Article 35 of Chinese Trademark Law.

Brief Comments：

The Chinese parts of two sides’ trademarks ‘科罗娜’ and ‘泰罗娜’ respectively, both of which are composed by 3 Chinese characters, the last two characters are totally identical, only difference lays on the initials, China National Intellectual Property Administration judged that they are not similar. It can be seen that the initial plays an important role in judging whether two trademarks constituted similarity. Also, the trademark examination standard clearly stipulates that ‘if the initials of trademarks are obvious different in terms of sounds and glyphs, or the overall meaning is different, so that, the overall difference of trademarks are obvious, moreover, it will not lead misidentification among the public in terms of sources of services or goods, the trademark shall not be judged as similarity.’

In a similar way, for the judgement on similarity of English trademarks, also, the examination standard clarifies that ‘if the initial sound of the trademark and the glyphs are obviously different, so that the overall difference of the trademark is obvious and the public concerned is not likely to be confused about the source of the goods or services, the trademark shall not be judged as similarity.’ However, in this case, the person challenged designed ‘Tailuona’ into ‘ ’, the first letter T has been specially designed, so that its visual effect is very similar to the unique C letter of the opponent, moreover, the second and the last three letters were identical/similar to the opponent’s trademark ‘’, as a result, the trademark has been judged as similarity by China National Intellectual Property Administration. This shows that when judging whether English trademarks are similar or not, China National Intellectual Property Administration does not consider the letter content itself, but also pays close attention to the visual effect brought to consumers by the overall appearance, especially, if the overall appearance of the trademark is similar through writing or artistic design, it will be judged as a similar trademark.