Why Wallet and Clothes in Different Trademark Classes Would be Taken by China Court as Similar Products?

(By Luo Yanjie) When registering trademark in China, the applicant shall first determine the classification of the trademark to be registered. Class 18 of the Classification of Goods and Services include goods such as leather and artificial leather, goods made from these materials and not included in other classes, cases, travelling bags, and umbrellas. Goods under Class 25 includes clothing, footwear, and headgear. Looking at it closely,  Class 18 is classified by its physical attribute, while Class 25 is classified by the purpose of the goods. Would the two Classes constitute similar goods for any particular product? In today’s post, a specific case would be introduced to analyze this question.

Introduction to the case

Huanqiu Company owns the certificate numbered 1313473 for“E.Q.I.Q” trademark (“reference trademark”) in Class 25 for clothing, footwear, headgear and other products for the mainland China region. In May 2004, Ni Zhouda registered a No.4054775 certificate for “EQ. IQ” trademark (hereof “disputed trademark”) in Class 18 for (animal) leather, wallet, briefcase and other products. In July 2010, Huanqiu Company applied to the Trademark Review and Adjudication Board (“TRAB”) to revoke the disputed trademark, alleging that the disputed trademark constitutes a similar trademark for the same trademark design and similar particular goods of the reference trademark. After TRAB dismissed Haunqiu’s complaint, Huanqiu Company filed an administrative lawsuit to Beijing No.1 Intermediate People’s Court.

The case was heard in two instances, both of which ruled in favor of Huanqiu Company. The key point in the case is whether the disputed trademark for “leather and wallet” constitutes as similar goods of the reference trademark.

Pursuant to Article 28 of the Trademark Law: “Where for a trademark application, the registration of which has been applied for is not in conformity with the relevant provisions of this Law, or it is identical with or similar to the trademark possessed by another person, in respect of the same or similar registered goods, the Trademark Office shall refuse the application and shall not publish the said trademark.” The court explained that whether two goods are similar in the trademark licensing depends on the misunderstanding of the original or similar association between the two manufacturers rather than the comparison of its physical attributes. In this case, the disputed trademark assumes both a similar trademark on the same four-letter and the same order that the letters are published.

At the same time, when comparing the goods originated from the two trademarks,the distribution channels and its targeted consumer group is essentially the same. Furthermore,  considering that it is very common in China for one manufacturer to produce both “wallets” and “clothing” and that the two trademarks looks very similar, “(animal) leather and wallet” for disputed trademark assumes similar goods to “clothing” for reference trademark.

Lawyer’s comments

The biggest controversy for the case is whether the classification for “(animal) leather and wallets) assumes similar goods with that of “clothing.” The Court determined the issue with the following standards for references:

First, is the natural appearance of the product.  Pursuant to the interpretation of the Supreme People’s Court Concerning the Application of Laws in the Trial of Cases of Civil Disputes Arising from Trademarks, similar goods are divided into two types: goods of the same feature, usage, production department, distribution channels, consumer group, and the other type are goods that confuses the general public. As provided in Article 12, “where a people’s court determines whether goods or services are similar in accordance with Item 1 of Article 52 of the Trademark Law, it should make an overall determination based on the normal knowledge of the relevant public with regards to the goods or services. The International Classification of Goods and Services for the Purposes of the Registration of Marks and the Classification of Similar Goods and Services may be used as a reference for determining the similarity of goods or services.” The Court held that whether two goods are similar in its trademark licensing depends on whether there is a misunderstanding of the original or a similar association between the two manufacturers, rather than on the comparison of its physical attribute alone. In practice however, it is unavoidable to not consider the natural attributes of the goods, particularly the association made by the common sense of relevant public on the goods and services.

The second standard provided by the Court is the trademark’s reputation. The more prestigious the reputation is, the stronger correlation between the similar goods is. Two different goods under the classification of The International Classification of Goods and Services for the Purposes of the Registration of Marks and the Classification of Similar Goods and Services assumes similar goods upon improving its commercial value, market reputation, and public recognition of previous trademark. For this reason, it leads to cross-protection for well-known trademark.

Hence, the definition of similar goods in the trial depends on the specific case in question. Whether the two goods are similar or not, the feature, usage, and distribution channels are all elements that must be considered. If the relevant public misunderstands the original or similar association between the two manufacturers, the two goods are by legal definition considered as similar.

Lawyer Contacts

You Yunting86-21-52134918  youyunting@debund.com/yytbest@gmail.com

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