(By Luo Yanjie) Abstract: as for whether trademarks are similar, many times, it is decided on the subjective cognition of the judge. Furthermore, considering the fact of the distinctiveness of a trademark, whether the “TT” trademark has distinctiveness is still in doubt.
Automobile models are always composed of simple numbers and English letters. Sometimes manufacturers of bestselling cars once hoped to register these simple models as trademarks but all failed (for example, A6, A4, etc.). However, Audi canceled the rules handled down by the Trademark Review and Adjudication Board through administrative litigation processing, thus possibly obtaining trademark registration:
Introduction to the case:
Audi applied to the Trademark Office for requiring to the extended protection in China of “TT” trademark numbered 896488 (the “proposed trademark”) under Class 12 of “apparatus for locomotion by land, air or water”.
On July 16, 2007 the Trademark Office rejected Audi’s extended protection of “TT” trademark in under class 12 in China, alleging that the proposed trademark is similar with the“┳┳”trademark numbered 4430850 (the “dispute trademark”). Dissatisfied with the rejection, Audi filed an administrative lawsuit.
The first instance court upheld that: the dispute trademark is a graphical mark in aspect of general appearance and cannot be recognized as “TT” by customers while the proposal trademark is composed of parallel combination of double “T”. The general appearances between the proposal trademark and the dispute trademark have a comparative difference, and, if relevant customers paid their attentions on relevant commodities, the marks and the commodities are easily distinguishable so that the proposal trademark cannot confuse or mislead customers. Therefore, the court canceled the rule handled down by the Trademark Review and Adjudication Board and requested it to do a re-cognition of the proposal trademark. Although the Trademark Review and Adjudication Board appealed, the second instance court affirmed the original judgment.
I. Deciding whether trademarks are similar needs a great subjective knowledge.
Article 28 of the Trademark Law stipulates: 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 has already been registered or given preliminary examination and approval for use on the same kind of goods or similar goods, the Trademark Office shall reject the current application and shall not publicly announce that trademark.
As for where the two trademarks are similar, laws have no clear message. The only detailed standard of judgment is the Trademark Review and Adjudication Standards abided by the Trademark Office. As for the review standard for English letters, the Trademark Review and Adjudication Standards formulate that “marks that are made of same foreign language, letters or numbers only with different fonts or designs, which easily mislead the relevant public on the sources of goods or services, are being decided as similar trademarks.”
Based on the above provision, if “┳┳”trademark is decided to be made up of the English letter “T”, it would lead to the rejection of Audi’s “TT” mark applied later. Therefore, the court held that the“┳┳”trademark is difficult to be recognized as the “TT” trademark. As for the reason, the court never explains it, and actually cannot explain it.
This shows, as for whether trademarks are similar, many times, it is the judge’s subjective knowledge that determines it. Everyone probably has different opinions than others without a professional view (because the judgment shall be subject to common customers’ prospective). For example, in this case, we agree with the rule handled down by the Trade Review and Adjudication Board, in opposition to the court’s opinion.
II. Could “TT” itself be applied for a trademark?
Except for the problem of similarity, whether the “TT” trademark can be succeeded in application is still in need of further discussion. First, objectively speaking, “TT”, a high-end supercar by Audi, is becoming an automobile model to the public. Certainly, the Trademark Law solely stipulates a “generic model” cannot apply for a trademark but never formulates that a special model cannot apply for a trademark.
Where the Trademark Law also stipulates that the trademark shall have the distinctiveness, the Trademark Review and Adjudication Standards formulates that a mark with “one or two common forms of letters” does not have the distinctiveness. Therefore, if the Trademark Office rejects the application with “no distinctiveness” from the beginning instead of with “prior application”, the Trademark Office may not lose in an administrative suit. In other words, “TT” would not be able to obtain application, just like that of A6 and A4 by Audi.