(By You Yunting) When applying for trademark registration in China, foreign companies are often puzzled by an issue arising out of a translation of a foreign trademark into Chinese being rejected by the Trademark Office due to a language conflict with some preexisting trademark. In our experience, however, if an applicant can prove to the court that its trademark won’t cause confusion with previously registered trademarks, there is a great chance of success in a foreign trademark ultimately being registered. As follows, we will introduce a case where a Chinese court supported the Japanese Shiseido Ltd. Co. in applying for registration of its BéNéFIQUE trademark.
Introduction to the Case:
Plaintiff: Shiseido Limited Company (the “Shiseido”)
Defendant: The Trademark Review and Adjudication Board (the “TRAB”)
Court of First Instance: Beijing No.1 Intermediate People’s Court No.: (2003) 一中行初字第664号
In 2003, Shiseido Limited Company (the “Shiseido”) filed an application for registering its BéNéFIQUE trademark with the Trademark Office and then was rejected by the Trademark Review and Adjudication Board (the “TRAB”). Dissatisfied with the rejection, Shiseido brought an administrative lawsuit to the Beijing No.1 Intermediate People’s Court.
The TRAB, in its defense, argued: the primary meaning of the BéNéFIQUE trademark (the disputed trademark) under class 3 for soap and cosmetics was “吉祥的” (“lucky” in English) in Chinese, constituting a similar trademark with number 1425195 “吉祥J.SUN及图 Jixiang J.SUN and its shape” (the “quoted trademark”) for cosmetic pencils and other commodities – and that this resulted in confusion among the relevant public. Therefore, the TRAB rejected the plaintiff’s application and refused to publicize its registration.
However, the plaintiff insisted its trademark for application was just a French word. The quoted trademark contained three distinct parts: “吉祥”, “J.SUN” and the “cloud shape”. Seen as a whole, it is the “cloud shape” that was the most significant portion. On one hand, where there is a big difference between the visual properties and a general name between two trademarks, there is little possibility of confusing relevant consumers. On the other hand, the Chinese meaning of the disputed trademark referred to a kind of astrological vocabulary, not its common meaning, which the public and relevant consumers were unfamiliar with.
The court heard the case and held that, because a trademark is meant to identify the source of goods and services, and is a basis for relevant customers to distinguish the manufacturers and services providers, with regard to the standards utilized to determine whether a trademark constitutes a similar trademark, one shall consider the combined reasoning of the consumer’s perspective and various geographical factors. In this case, where the disputed trademark just utilized a French word, and where the quoted trademark was a combination trademark with Chinese characters and English letters as well as a distinctive cloud shape, it was apparent there was a significant difference in basic appearance between the two. Because the plaintiff proved the disputed trademark to be astrological language, unfamiliar to Chinese consumers and not a common word, therefore, the plaintiff argued, the relevant Chinese customer wouldn’t read “BéNéFIQUE” as being equivalent to “吉祥的”， and therefore any alleged confusion as argued by the defendant between the disputed trademark and the quoted trademark would not exist.
Although an individual consumer may read and pronounced “BéNéFIQUE” as “吉祥的” and may think the two trademarks to be similar, an individual consumer’s habits of reading and pronunciation cannot become the basis to determine two trademarks as being similar. Thus, despite the two trademarks being registered under similar classes, the two trademarks could not constitute similar trademarks for the purpose of challenging the registration of the subsequent mark from Shiseido. Therefore, the court dismissed the review decision handed down by the TRAB.
This case contained two legal questions: the first is that the court shall review whether a translated meaning of a foreign language trademark may constitute a similar trademark with a prior registered Chinese trademark; the second is which perspectives should be utilized by the court to determine whether such translated meaning constitutes similarity such that a consumer will be confused by the two trademarks.
- What are the criteria used by the court to determine whether a translated trademark from a foreign language trademark is similar to a previously registered Chinese trademark?
Pursuant to the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in Hearing Civil Cases Related to Trademark Disputes, the act of using words identical or similar to another’s registered trademark as a trade name in a distinctive manner on identical or similar goods, and thus causing possible confusion among the relevant public, shall constitute an infringement upon another’s exclusive right to a registered trademark. Based on this, the core point is whether there is confusion among the relevant public between the two trademarks.
Therefore, a lawyer facing such cases should focus on the point to the court that the relevant public won’t be confused between the applied trademark and the quoted trademark. The Shiseido lawyers did prove this.
What conditions should exist in order to reach a finding that relevant consumers would be confused between two trademarks? Here’s an example: there are often translation conflicts with prior trademarks existing not only with regard to foreign language trademarks, but also among Chinese language trademarks. The Korean Nexon Company owns an online game called “Maple Story” outside China that is called “冒险岛” in the Chinese market, which translated directly refers to the title “Adventure Island” in the English language. When Nexon filed an application for the “冒险岛” trademark for electronic games, the court rejected its application based on the meaning of “冒险岛”, a trademark similar to that of “Adventure Island,” a trademark owned by the Japanese game company Hudson Co., Ltd.
Such rejection makes sense, because Hobson’s “Adventure Island” was a game developed for the Nintendo entertainment system and MSX (a standardized computer architecture designed by Microsoft) in 1986, more than ten years earlier than “冒险岛”. If the “冒险岛” was approved to apply for a trademark, there would be obvious confusion among players familiar with the Nintendo entertainment system and MSX computer.
2. What perspective shall the court stand from to judge similar cases such as this case?
The judicial interpretation of the Supreme People’s Court makes it clear that the standard to determine confusion shall be any resulting or alleged confusion between two trademarks. Therefore, the court shall consider such questions from the perspectives of relevant public. Here the term “relevant public” in the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in Hearing Civil Cases Related to Trademark Disputes refers to “consumers related to the goods or service for which the trademark is used and other traders who have a close relationship with the aforesaid goods or service.”
In practice, the relevant public mainly includes any of the following:
(1).The goods’ manufacturers or service providers related to the trademark;
(2).The consumers for which the trademark was used;
(3).Any other traders and related individual who has a close relationship in distributing goods or services that relate to the trademark.