(By You Yunting) Initially in its application, SAMSUNG failed to obtain its Chinese-transliterated trademark for cameras by virtue of a prior-registered trademark under Class 9 for screen products.
Dissatisfied with the decision, SAMSUNG brought the case to courts and finally got support from the court of second instance, thus now likely being able to register its Chinese-transliterated trademark for cameras. In today’s post, we’ll introduce the case and analyze how SAMSUNG proved screens and cameras to not constitute similar products.
Introduction to the Case:
Appellant (Plaintiff in the first instance): SAMSUNG
Respondent (Defendant in the first instance): Trademark Review and Adjudication Board (the “TRAB”)
Court of first instance: Beijing No.1 Intermediate People’s Court No.: (2013)一中知行初字第668号
Court of second instance: Beijing Higher People’s Court No. :(2013)高行终字第2015号
On July 20, 2010, SAMSUNG filed an application for “三星” trademark，a Chinese-transliterated trademark from “Samsung”, under Class 9 for televisions, mobile phones, notebook computers, mice (data processing equipment) and cameras (photography).
The Chinese Trademark Office (the “CTMO”) made a decision on March 1, 2011, deciding that the trademark application for televisions, mobile phones, notebook computers and mice (data processing equipment) are approved for publication and that the CTMO rejects the mark application for cameras (the “disputed trademark”) on the grounds that the marks constitute similar goods with a reference trademark that had previously been registered by Zhangjiagang Educational Electronic Equipment Factory under Class 9 for screens.
Dissatisfied with the rejection, SAMSUNG applied for review with the TRAB, alleging that the disputed trademark and the reference trademark are not similar as regulated in the Trademark Law in such aspects as the function, purpose, industry, sales channel and targeted consumers, with the result that they do not constitute similar trademarks on similar goods.
In the proceedings of the review, SAMSUNG presented the following evidence:
(1) Archives for the disputed trademark;
(2) Archives for the reference trademark;
(3) Introductions to the relevant “screens” and “cameras”;
(4) Photos of the screens made by Zhangjiagang Educational Electronics Equipment Factory;
(5) Photos of the cameras produced by SAMSUNG.
On October 8, 2012, the TRAB made the No. 41564 ruling, deciding that the disputed trademark was a plain text mark, similar with that of the reference trademark, and thus similar to the reference trademark. Furthermore, where cameras and screens are similar goods that are associated with each, and thus are likely to produce confusion among relevant public, the disputed trademark would constitute a similar trademark for use in connection with the similar goods. For these reasons, the TRAB dismissed the application of the disputed trademark.
After failing to get support from the TRAB, SAMSUNG brought the case to Beijing No.1 Intermediate People’s Court but was unsuccessful. During the proceedings of the first instance, SAMSUNG provided six new pieces of evidence in the following:
(1) The search results of “SAMSUNG” and “三星” from Baidu.com, Google.com, wikipedia.org and iciba.com, in proving “SAMSUNG” and “三星” have already formed one-one correspondence.
(2) A Copy of enterprise list of SAMSUNG and its affiliated companies in China;
(3) A Copy of one article named “三星EXCL相机” published on Camera Magazine in 1997;
(4) Copy of an advertising contract signed between Tianjin SAMSUNG Opto-Electronics Co., Ltd, SAMSUNG (China) Investment Co., Ltd and a Beijing advertising company in the period from 2008 to 2012 ;
(5) Copies of the airplane advertisements for its digital cameras from 2007 to 2012;
(6) Television advertising videos and lists of its cameras from 2007 to 2013.
In the proceedings of the second instance, SAMSUNG provided search information from Amazon.cn, Taobao.com, Etao.com, Jd.com, Suning.com and Gome.com.cn in order to prove that screens are the category of office stationery, that cameras belong to the digital product category and that Samsung cameras have already achieved high brand awareness among the relevant public.
The court of second instance held that, “similar goods” refers to the goods that are identical in such aspects as the function, purpose, industry, sales channel and consumers, or goods that are likely to lead the relevant public into thinking they are associated with each other and cause confusion. When judging whether the goods are similar, the Chinese Goods and Services Classification may be used as a reference. However, judging whether the goods are similar shall be primarily in reference to the actual market, and to rely on the average knowledge of the public in combination of the aforementioned factors, and be based on the general knowledge and transaction concepts pertaining to the goods, thus allowing the court to form a comprehensive overall judgment. The approved goods for use of the reference trademark are made of cloth or plastics and for the purpose of playing video in cinemas and educational institutions, which is considered as a non-electrical product. As such, the approved goods for the use of the disputed trademark could be distinguished as an electrical product among the relevant publics. So in accordance with the development of the market, screens and cameras are not similar goods. Therefore, that the disputed trademark was not similar to the reference trademark as regulated in Article 28 of the Trademark Law. Consequently, the judgment of first instance and ruling of TRAB is incorrect and should be corrected. The court of second instance ordered the TRAB to remake the ruling of the disputed trademark.
Lawyers’ Comment:
Pursuant to the Chinese Goods and Services Classification in line with the Nice Classification, screens and cameras are similar. However, in this case, and in our opinion, the key point that allowed SAMSUNG to win the disputed trademark is that SAMSUNG is really a camera producer familiar with relevant public in China. It is SAMSUNG that proved this point in different stages of the proceedings.
The evidence presented in the review of TRAB is designed to introduce the basic information of the disputed trademark and the reference trademark and to prove that screens and cameras are not similar products.
The evidence provided in the first instance is designed to prove the disputed trademark has been widely available in the market, and that it would be distinguished from the reference trademark among the relevant public.
Subsequently, the evidence submitted to the second instance served to prove that the screens fall under the category of office stationery, that cameras fall are under the category of digital products and that SAMSUNG cameras have achieved high brand awareness among the relevant public.
For more information and background about the court’s rulings on similar goods, please read our previous posts: Why Next Trademark receives Cross-class Protection in China, Why Glasses and Clothing were Similar Products and Why Wallet and Clothes in Different Trademark Classification Taken by China Courts as Similar Products.
Lawyer Contacts
You Yunting：86-21-52134918 youyunting@debund.comyytbest@gmail.com
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