(By Luo Yanjie) China is facing a worsening situation with regards to serious trademark squatting. With more and more registrars rushing to register possible trademarks that once were used by famous enterprises, there is little help for enterprises holding such famous trademarks. For example, a registrar has just succeeded in the grant of a trademark, similar with what HUGO BOSS AG had, under the class for cosmetics and fragrances. Today we will introduce this case as follows.
Introduction to the Case:
Plaintiff: HUGO BOSS Management GmbH & Co.KG (the “HUGO BOSS AG”)
Defendant: Trademark Review and Adjudication Board (the “TRAB”)
The Third Party: Mr. Pan Jiafeng
Court of first instance: Beijing No.1 Intermediate People’s Court No.: （2012）一中知行初字第1947号
Court of second instance: Beijing High People’s Court No.: （2013）高行终字第1203号
Mr. Pan Jiafeng filed an application for “H30SS” trademark (the “disputed trademark”) with the Chinese Trademark Office (the “CTMO”) on May 29, 2003 under the Class 3 for cosmetics and fragrances. During the period of objection, HUGO BOSS AG filed an opposition, alleging that the disputed trademark was similar with its two trademarks (the “reference trademark”), i.e., number G606620 “BOSSHUGOBOSS” trademark and number G782578 “BOSSHUGOBOSS” trademark, under Class 3. After receiving the opposition, The CTMO decided to reject the registration of the disputed trademark for cosmetics and fragrances, ruling that the disputed trademark for cosmetics and fragrances was similar with the reference trademark in the use of similar goods.
Mr. Pan Jiafeng, who was dissatisfied with the ruling, applied for a review with the TRAB. The TRAB approved the registration of the disputed trademark, deciding that the disputed trademark was different with the reference trademarks in pronunciation and meaning and thus was not similar with the reference trademark. Disagreeing with the decision, HOGO BOSS AG brought administrative litigation against the decision, alleging that its reference trademark had high popularity and brand awareness for clothes and that the registrar had copied its trademark with malicious intent.
The Beijing No.1 Intermediate People’s Court held upon the hearing:
- The disputed trademark was different with the main part of the reference trademark in words, sequence, appearance, pronunciation and meaning.
- Even though HOGO BOSS AG’s trademark has obtained a degree of popularity and awareness in clothing, it had failed to prove that its reference trademark had achieved popularity and awareness in cosmetics and fragrances and thus failed to demonstrate that the disputed trademark was similar to its trademark.
For these reasons, the court affirmed the decision of the TRAB. Afterwards, HOGO BOSS AG appealed but was again unsuccessful.
1. There is plenty of discretion in the subjective requirements for review
The Trademark Review and Adjudication Standards stipulates that the words of a trademark that are similar and would cause confusion amongst the relevant public of the goods or services will be determined as a similar trademark. According to a literal interpretation of this regulation, it is likely that “H30SS” and “BOSS” are similar. However, there are no clear provisions to determine whether the two words are similar in accordance with the regulation.
In practice, every trademark is reviewed by an individual examiner. As such, there will invariably be some differences in their professionalism, knowledge, work experience and sense of responsibility; various factors in combination with these differences may decide the result of a trademark review. In general, a trademark review is a process with large discretion and subjectively. As such, different review results cannot be avoided.
2. Awareness of prior registered trademark
Article 28 of the Trademark Law stipulates that, where “an application to register a trademark that is not in conformity with the relevant provisions of this Law or that is identical with or similar to another person’s trademark which has already been registered or given preliminary examination and approval for use on the same kind of goods or on similar goods, the Trademark Office shall reject the current application and not publicly announce that trademark.” When concerning a prior registered trademark, if some brand awareness exists, this results in the strict examination of any subsequent applications for that trademark or a similar one.
However, this requirement of awareness is a little lower than what a well-known trademark requires. Despite this, HUGO BOSS AG satisfies with its area of distribution, the advertising promotion it received, the reputation it obtained, the records proving that it once acted as a well-known trademark, and its ranking. However, the most important requirement is that the goods attached with awareness must be the relevant goods involved in this litigation. Taking this case as an example, even though the reference trademark has obtained awareness to some extent, the goods that obtained awareness are not the relevant goods, like the cosmetics and fragrances involved in the case. Therefore, the court refused to accept the claim that the reference trademark for cosmetics and fragrances is famous.
Generally, we agree with the judgment handled down the court in the following reasoning. Even though the “BOSS” trademark is famous in clothing, the Trademark Law protects not only the trademark holder but also other competitors and the interest of public. In this case, the approved use of goods, i.e., cosmetics and fragrances, is not similar to goods in the category of clothing with the reference trademark. Furthermore, the two trademarks have bigger differences than similarities, thereby allowing consumers to distinguish the two trademarks without causing confusion. As such, the disputed trademark should be approved to be registered.