SANYANG registered despite SANYO opposition

The Chinese Trademark Office (TO) has rejected Japanese manufacturer Sanyo Electric Co Ltd's opposition to the registration by a local company of the mark SANYANG in Chinese characters. The TO held that although the word element of the SANYANG mark is identical to Sanyo's Chinese character mark, the public would not be confused as the marks apply to dissimilar goods (Opposition application 1576797, July 2004).

In January 2000 a manufacturer of umbrellas based in Guangxi, China filed an application to register SANYANG in Chinese characters and a device consisting of three semi-circles as a trademark for umbrellas and related goods in Class 18 of the Nice Classification. Sanyo opposed the application on the basis of its famous SANYO mark in Latin characters and its trademark in Chinese characters, which is identical to the SANYANG mark. Although the SANYO mark is registered for goods different from those covered by the SANYANG mark, Sanyo claimed that the public would be confused in view of the fame of the SANYO mark. Sanyo also claimed that the SANYANG mark was applied for in bad faith.

The Guangxi manufacturer did not deny that the marks are similar. However, it reiterated that consumers are unlikely to be confused as the goods are different in terms of their:

• nature;
  
  
• function;
  
  
• materials;
  
  
• markets; and
  
  
• distribution channels.

Further, it held that it had designed and used its SANYANG mark in good faith.

The TO upheld the umbrella producer's contentions. It is unknown whether Sanyo will appeal.

For a discussion of another case in which the owner of a well-known mark failed in its opposition to the registration of a similar or identical trademark in China, see Local manufacturer may take a bite from Apple's logo.

Philip Tsang, Lloyd Wise & Co, Hong Kong