Composition of similarity among trademark ‘沃查查’ (Chinese characters in Pinyin WO CHA CHA), ‘沃’(Chinese characters in pinyin WO) and other trademarks

Profile of the Case

The opponent, China United Network Communications Group Co., LTD., filed an opposition against the trademark ‘沃查查’ (Chinese characters in Pinyin Wo Cha Cha) with trademark No. 49251608 on the Class 42. After the examination, the China National Intellectual Property Administration (CNIPA) finally made a decision not to register the disputed trademark. 

CNIPA held that service items of both parties are similar in terms of service content and service mode, belonging to the identical or similar services. The evidence provided by the opponent can prove that the trademark ‘沃(Chinese character in Pinyin is Wo) and device’ and other trademarks used by the opponent in the service of ‘computer programming’ have gained a high reputation through the use and publicity of the opponent. The disputed trademark completely contains the significant part of the opponent’s cited trademark, without forming other obvious new meanings. It is easy for the relevant public to mistake the two trademarks as a series of trademarks from the same market entity or have a specific connection, thus causing confusion and misidentification of the source of the service. The trademarks of both parties have constituted similarity on the same or similar services. As a result, CNIPA has decided to not approve the registration of the disputed trademark. 

Analysis to the Case

As per the regulations in Standards for Trademark Examination: ‘If a trademark completely contains or imitates other people's prior well-known or distinctive word trademark, which is easy for the related public to think that it belongs to the series trademark and confuse the source of the goods or services, it shall be judged as a similar trademark.’

First of all, , the series of trademark ‘沃’ (Chinese character in Pinyin is Wo) have gained certain reputation and influence after the use of the opponent, and formed a stable corresponding relationship with the opponent. Regarding this, in the grounds of the opposition, the opponent has filed the ruling of demurral and the ruling of invalidation the prior recognized the series trademark of  ‘沃’ (Chinese character in Pinyin is Wo) have gained certain reputation, news reports regarding the series trademark of  ‘沃’ (Chinese character in Pinyin is Wo), as well as other pieces of evidence related to the use and publicity. 

Secondly, the disputed trademark ‘沃查查’ (Chinese characters in Pinyin Wo Cha Cha) completely contains  ‘沃’ (Chinese character in Pinyin is Wo), the dominant part of the cited trademark. As an onomatopoietic word, ‘查查’ (Cha Cha) refers to the call of the magpie, also, the initial word of the trademark is ‘沃’ (Wo), which further highlight ‘wo’ is the central meaning of the disputed trademark. As a result, the disputed trademark ‘‘沃查查’ (Chinese characters in Pinyin Wo Cha Cha) has not formed a new meaning to distinct from the cited trademark.

Finally, the opponent has applied for series trademarks ‘Wo **’ on the similar or identical services, i.e. ‘沃婆婆’ (Yao Po Po in Pinyin), ‘沃管管’(Yao Guan Guan in Pinyin). Among the grounds of the opposition, the opponent has listed its’ series trademarks of ‘wo’ that applied for registering under Class 42, intending to show that the words composition of the disputed trademark is identical with the composition of the opponent’s series trademark ‘wo’, furthermore, the dominant part of both parties’ trademark are ‘沃’ (Wo in Pinyin), the co-use of which is easy to cause confusion and misidentification by the relevant public. 

When comparing the trademarks, we need to consider the overall meaning of the trademarks, the series trademarks registered by the opponent and the reputation of the series trademarks, rather than simply comparing the words composition of the trademark. For example, the disputed trademark in this case is approved for registration, in view of the series of trademarks ‘Wo **’ registered by the opponent, then the relevant public is bound to mistake the disputed trademark as belonging to the opponent's series trademark "Wo". In the examination, CNIPA conducted the examination through the aspects above and adopted our grounds of the opposition, and finally decided that the disputed trademark and cited trademark constituted similarity, and the disputed trademark was not approved for the registration. 

In practice, in situations similar to this case, many holders of the prior trademarks may think that there are some certain differences in terms of trademark composition and pronunciations, so they may not file opposition against to the trademarks and let them be registered, as a result, there may be confusion and misidentification in the market after approval of the registration, furthermore to damage the holder’s prior trademark right, or this trademark may become an obstacle to the prior right of the holder to apply for registration of a series trademark afterwards. In view of this, it is recommended that the holder of the prior right actively protect their rights and curb the behavior of free-riding in time.