Background of the case:

Recently, the agency acted for the FAPA VITAL ANSTALT to file an opposition application for the trademark “FERTIL PRO” under No. 23773155 to the Trademark Office. The designated goods of the disputed trademark falls under class 5 “Sanitary napkins”, the Trademark Office gave preliminary approval after the examination. However, the opponent has the prior registered trademark “PRO FERTIL” under reg. No.11865787 on designated goods on class 5 “Vitamin preparations; Dietetic substances adapted for medical use; Preparations for pharmaceutical purposes; Veterinary medicine” , the trademark “PRO FERTIL and device” under Reg. No. 884097 with prior international registration and territorial extension to China’s protection. Finally, the Trademark Office declined the registration of the disputed trademark according to Article 7 and Article 30 of the Trademark Law of P.R.C.

The Trademark Office held that the designated goods of two sides did not constitute similar goods due to different functions, purposes and sale channels, as a result, trademarks of two sides didn’t constitute similarity in terms of use on similar goods. The opposed party’s cited trademark “PRO FERTIL” is non-English inherent vocabulary with obvious creativeness, also has a certain reputation through the opposed party’s wide publicity and use. The disputed trademark and the cited trademark are similar in terms of the same composition of English letters, as a result, they constituted similar trademarks. Apart from the disputed trademark, the party challenged also registered many other trademarks that are similar to other persons’ original trademarks or the same name with the goods, this degree of consistency is hardly a coincidence, and the party challenged cannot give reasonable explanation. On these grounds, the Trademark Office recognized the party challenged made intentional copy or imitation to trademarks of others. Such behavior will not only pose confusion among the public to the source of goods, but also damage the market order of fair competition, also violate the principle of good faith.

Comments:

In the case, it can be summarized as same composition of English letters of trademark with different goods, if strictly followed the provisions of Article 30 of the Trademark Law of P.R.C. the application for the registration of the disputed trademark on the goods “Sanitary napkins” should approved, but that was not the case. In this case, The opposed party’s cited trademark “PRO FERTIL” is non-English inherent vocabulary with obvious creativeness, also has a certain reputation through the opposed party’s wide publicity and use. The disputed trademark and the cited trademark are similar in terms of the same composition of English letters, as a result, they constituted similar trademarks. Apart from the disputed trademark, the party challenged also registered many other trademarks that are similar to other persons’ original trademarks or the same name to the goods, this degree of consistency is hardly a coincidence, and the party challenged cannot give reasonable explanation. Accordingly, the Trademark Office held the party challenged made intentional copy or imitation to trademarks of others. Such behavior will not only pose confusion among the public to the source of goods, but also damage the market order of fair competition, also violate the principle of good faith. As a result, the Trademark Office jointly applied Article 7 and Article 30 of the Trademark Law of P.R.C in this case, refused the application for registration of the disputed trademark.

The Trademark Office’s decision reaffirmed that the Trademark Office did not mechanically judge the trademark is similar to or similar to the goods/services in the course of examination, but also made overall consideration in terms of distinctive, reputation, the applicant of the disputed trademark cannot provide reasonable explanation to the similarity between the disputed trademark and cited trademark, as well as the overall registration status of the disputed trademark of the applicant, to judge if the applicant of the disputed trademark has subjective maliciousness, to apply Article 7 and Article 30 of the Trademark Law of P.R.C for determining malicious registration of the disputed trademark, the decision has important reference and guiding significance. The principal of good faith derives from the principle of public order and good social customs. The application of Article 7 and Article 30 of the Trademark Law of P.R.C is a combined use of principle clause and specific clause, it shows the Trademark Office’s flexible application of laws and regulations in the course of examination, also reflects the Trademark Office’s decisions on active fighting against malicious registration and maintaining the market order of fair competition, it has significant reference value.