(By Luo Yanjie) Abstract: To judge whether two goods are similar, generally is ruled upon the basis of the Chinese Goods and Services Classification and then on the courts’ interpretation of different cases and facts. The trademark application shall not be a means to register a mark that is already in use by another party and enjoys substantial influence, and shall also not infringe upon another party’s prior existing rights.
The statement “Goods and service are similar” refers to the goods and services that are associated with each other and thus are likely to produce confusion among the relevant public (our previous post, Why the “NEXT” Trademark could Receive Cross-class Protection in China had introduced similar problems), in which the actual situations conflict with the Chinese Goods and Services Classification of the Chinese Trademark Office (the “CTMO”). In today’s post, we would like to introduce a typical case.
Introduction to the Case:
Plaintiff: Xilinhot City Baoxun Trading Co., Ltd
Defendant: the Trademark Review and Adjudication Board
The third party: Yang Jingzhong
Court of first instance: Beijing No.1 Intermediate People’s Court No.: （2011）一中知行初字第1817号
Court of second instance: Beijing Higher People’s Court
Mr. Yang Jingzhong applied for registering “豹迅 Bao Xun” trademark (the “disputed trademark”) numbered 3755991 under Class 9 for disks drove for computers and floppy disks on October 17, 2003. In the period of an objection, Xilinhot City Baoxun Trading Co., Ltd filed an opposition against a trademark application of Mr. Yang Jingzhong and argued in the following: firstly, it had already used “豹迅” trademark for the computer repairs and registered “豹迅” as its enterprise name; secondly, Xilinhot City Baoxun Trading Co., Ltd, a well-known enterprise, enjoys high brand awareness and popularity particularly in the field of computer sales; finally, Mr. Yang Jingzhong, a friend of the president of Xilinhot City Baoxun Trading Co., Ltd, was quite familiar with the company and its trademark.
However, the CTMO dismissed the objection upon hearing the case and approved the registration of the disputed trademark. Xilinhot City Baoxun Trading Co., Ltd applied for a review but was rejected by the TRAB. Dissatisfied with the decision contained by the TRAB, Xilinhot City Baoxun Trading Co., Ltd brought the case to Beijing No.1 Intermediate People’s Court who affirmed the decision of the TRAB and then appealed to Beijing Higher People’s Court.
Beijing Higher People’s Court heard the case and held that:
- There is a close relationship between the services of computer assembly, including computer sales and maintenance, and the computer products. The services of computer assembly should be considered as being the provision of similar goods or services selling computer products.
- Xilinhot City Baoxun Trading Co., Ltd and its subsidies used the enterprise name “豹迅” and “豹迅” trademark substantially, thus enjoying the awareness and popularity of the “豹迅” trademark in Xilinhot City and even the Inner Mongolia Autonomous Region (note: Xilinhot City locates in the mid-east of Inner-Mongolia Autonomous Region). The registration for the disputed trademark that was under the ill-will of the third party Mr. Yang Jingzhong should be prohibited.
Therefore, Beijing Higher People’s Court repealed the decision of the TRAB and the judgment of Beijing No.1 Intermediate People’s Court.
Lawyers’ Comment:
I. How to judge whether goods are similar?
According to our trademark application system in China, to judge whether goods are similar, generally relies on the Chinese Goods and Services Classification that is regulated in accordance with the Nice Classification. Pursuant to the Chinese Goods and Services Classification, computer products are classified in the Class 9 but computer services and sales are classified in the Class 42, thus appearing to be mutually irrelevant. In practice, however, there is a high degree of association between the above-mentioned goods and servicesAn enterprise would provide computer products and services at the same time. Moreover, consumers are unlikely to distinguish the above-mentioned goods and services.
If one must distinguish goods and services strictlyaccording to the Chinese Goodsand Services Classifications, then one will fail to protect fair market competition and market order. Therefore, the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in Hearing Civil Cases Related to Trademark Disputes regulates that, when judging whether the goods or services are similar, the people’s court shall make its judgment based on the average knowledge of the public pertaining to the goods or service and that both the International Classification Table of Goods and Services for Trademark Registration and the Chinese Goods and Services Classification may be used as a reference when making such judgments.
In conclusion, to judge whether goods are similar, generally is ruled upon the basis of the Chinese Goods and Services Classification and then, by applying the courts’ interpretation of different cases and facts.
II. The right of enterprise name comprises the prior existing right as regulated in the Article 31 of the Trademark Law.
Article 31 of the Trademark Law regulates that the trademark application shall not be a means to register a mark that is already in use by another party and enjoys substantial influence, and shall also not infringe upon another party’s prior existing rights. In this case, “豹迅” is the enterprise name owned by the plaintiff. Generally, an enterprise name and a trademark are independent of each other. For the purpose of distinguishing the sources of goods, an enterprise name and a trademark may make conflict with each other.
In addition, the third party Mr. Yang Jingzhong, a friend of the president of the plaintiff, applied its enterprise name as a trademark himself with ill-will to some extent. Besides, considering the plaintiff itself enjoyed certain awareness and popularity in Xilinhot City, the registration of the disputed trademark in the same place would be likely to produce confusion among the relevant public. For these reasons, the court of second instance supported the claim of the plaintiff in the combination of the case and Article 31 of the Trademark Law.
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