Reputation and distinctiveness of earlier mark must be considered when assessing similarity
In the context of opposition proceedings, the Beijing Higher Court has held that the reputation and distinctiveness of the earlier mark was decisive when determining whether it was similar to a later mark.
On October 24 2002 a Mr Lin filed an application for the registration of the mark depicted below in Class 25 of the Nice Classification for “garments, shoes, neckties, shirts, T-shirts, socks, woolen fabric jacket (clothes), knitwear, underwear, pants, etc”.
The cited mark, filed on June 15 1998, was registered on September 28 1999 for “shirts, T-shirts, pants, jackets, skirts, socks, neckties, scarf, hats, shoes, gloves, underwear, etc” in Class 25.
On February 27 2004 Lin appealed to the Trademark Review and Adjudication Board (TRAB), which overruled the Trademark Office's decision on June 27 2007, without specifying any particular reason. The trademark was thus published on August 21 2007.
Lacoste filed an opposition on November 20 2007, citing the abovementioned trademark registration. On June 23 2010 the Trademark Office upheld Lacoste’s opposition and rejected Lin's trademark application. On August 6 2010 Lin appealed to the TRAB, which upheld the decision of the Trademark Office on February 1 2012. In particular, the TRAB held that:
“the disputed mark and the cited mark... exhibit only slight differences in terms of layout, shape, as well as overall visual effect. The two marks, when used on similar goods, are likely to cause confusion and misidentification among consumers, which constitutes the circumstance prescribed by Article 28 of the Trademark Law”.
Lin appealed to the Beijing Number 1 Intermediate Court.
The court held that the disputed mark and the cited mark were similar in terms of overall appearance, visual effect and layout. The relevant consumers would be unlikely to differentiate the marks when paying an average degree attention, especially as they rarely get the advantage of comparing the marks side by side.
The court thus found that the two marks were similar. However, according to the court, the fact that the TRAB had not addressed the issue of whether the cited mark had a reputation and had achieved well-known status had no bearing on Lin's interests.
Lin appealed to the Beijing Higher Court.
In his appeal, Lin insisted that the disputed mark was not similar to the cited mark. He also pointed out that the TRAB had reached conflicting conclusions in the original examination proceedings and in the opposition proceedings, and had thus failed to remain consistent and impartial. He further accused the TRAB of procedural illegality for failing to address Lacoste's claim that its mark was well-known in the opposition proceedings. Lin also argued that, as Lacoste's mark had not been recognised as well known, the TRAB should not have expanded its protection by finding two dissimilar devices to be similar.
On September 18 2013 the Beijing Higher Court rendered its judgment, ruling that:
“the disputed mark... resembles the cited mark in layout, but exhibits a different orientation from the cited mark. When taking these features into consideration, along with the reputation and distinctiveness of the cited mark for... garments, the court finds the decision made by the first instance court and the TRAB appropriate.”
The Higher Court further addressed Lin's accusations against the TRAB by stating as follows:
“Since the refusal procedure is initiated ex officio by the Trademark Office, Lacoste, which had no part in the refusal procedure, had no chance to adduce evidence to prove the reputation of the cited mark. The TRAB, which based its refusal decision and opposition decision on different facts, did not show any inconsistency during the examination. The TRAB, however, failed to address Lacoste’s claim as to the reputation of the cited mark during the opposition proceedings, and found that the disputed mark and the cited mark were intrinsically similar, which this court finds inappropriate. The court of first instance, which failed to address this issue, was equally inappropriate. Nevertheless, since the conclusion reached by the TRAB and the first instance court of refusing the registration of the disputed mark was correct, this court finds Lin’s appeal admissible but insufficient to change the conclusion of this case."
This case illustrates the importance of reputation and distinctiveness in determining similarity. The distinctiveness and reputation of the registered mark must be taken into consideration when assessing whether the marks are similar; the court may find these factors decisive when assessing similarity.
He Wei, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing
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