Introduction: Many past cases have shown, when a famous brand of a large enterprise needs to be protected, or when a large enterprise is alleged for trademark infringement, the administration organ or the court would subconsciously have a goodwill towards the large enterprise and tend to decide that the alleged infringer has the malice of intentional imitation, or the large enterprise has no intention to get a free ride, thus lower the criteria of trademark similarity and trademark confusion. Maybe this can be called a hidden welfare. However, in the absence of active measures taken for the protection of trademark rights, such welfare will soon cease to exist, and the strength of protection will also end up to the level of an ordinary trademark. This article will conduct a preliminary discussion about the different paths of trademark review for two famous brands.

I. The articles and provisions for special protection of famous trademark stipulated in trademark examination regulations

As the Trademark Examination Regulations published by The Trademark Office and Trademark Review and Adjudication Board clearly stated， “trademark contains others’ prior registered full word mark with a certain reputation or stronger significance level,  which easily makes the public think it belongs to the series of trademarks, and causes mis-understanding of the origin of goods and services, shall be considered as a similar trademark.”

The above article, as an article of guidance, is applied in the daily operations of  trademark review at Trademark Office. But in real practice, for trademarks with similar high reputation, the actual situation in the trademark review is very different, Please find the following cases:

II. Case analysis

Case 1: Famous Cartoon Brand “Takasaki GOJE”
“Takasaki GOJE” is a famous cartoon brand, with decades of history and great influence in China since its creation. In the text of the trademark, “Takasaki” and “GOJE” are original words with no specific meanings, and the trademark has a certain level of brand awareness in China. Obviously, the reviewer should have paid more attention on whether others’ trademark applications fully contain such words, and apply the above motioned clause to reject the applications actively and reasonably. But the fact is that we can find registered trademarks like “Takasaki Rabbit”, “Takasaki Bear”, “Love Takasaki”, “Takasaki”, and so on, Trademarks with additional characters with or without meanings have been registered successfully.

Case II  A famous brand of electric products- “Xihua SIWA”
Let’s check the current situation of trademark review for the brand “Xihua SIWA”. We can find that as long as the important classes of (7/9/11) are concerned, there is almost no similar trademarks have been registered successfully. Those imitators could only register the get-a-free-ride trademarks in more hidden ways, such as, to mislead the reviewer’s judgment by applying special design of the trademark, or to combine with other elements in the trademark design in order to look for holes in the review regulations and get registered. No matter what, the adverse effects on the right holder of “Xihua SIWA” trademark are greatly restrained.

III Summary and analysis
Comparing the two cases, it seems that the Trademark Office did not strictly comply with the trademark review regulations. But we think the different attitude of the two companies has caused the different review criteria of the Trade Office.
For these two cases with entirely different review results, except for the reason that  “Xihua SIWA” is more well-known than “Takasaki GOJE”, which is an important factor affecting the reviewer’s judgment, we think, the most important reason lies in the negligence of the right holder in protecting his trademark rights due to his ignorance of the Chinese trademark in the early time. So, there is no active opposition to the similar trademark applications to prevent them from being registered.
As a result, when reviewing the similar trademarks of “Takasaki GOJE”, the Trademark Office found many trademarks with similar structures had been registered successfully, considering the consistency principle of review criteria, based on the reputation of “Takasaki GOJE” alone, the reviewer could hardly reject other applications. As such, a vicious circle will take shape, i.e., the more precedent registrations, the more likely similar trademark applications won’t be rejected, and any trademark with affixing characters before or after “Takasaki GOJE” will be approved, eventually, all the trademarks like “Love Takasaki” & “Takasaki House ” with obvious imitation intentions will bel registered successfully. As for the infringers, so many successful precedents will encourage them to try applying for more imitating trademarks. Now, when the right holder of “Takasaki” trademark gradually pays more attention to the Chinese brand and the trademark protection, more energy and money have to be spent to fight against trademark imitation and to reverse the practice already established. In contrast, the right holder of “Xihua” trademark paid great attention to the protection of trademark rights from the beginning, whenever there was a similar trademark application, they would respond actively, and make full preparation for opposition work. Even when the opposition was failed, they would not give up until the imitation trademark get revoked. The positive right protection actions of the right holder of “Xihua” trademark get rewarded. Firstly, the imitators of “Xihua” trademark found that there were few similar trademarks being registered successfully, all the applications were opposed, and finally rejected. Gradually, no one would waste energy on such useless attempt. Secondly, for the reviewers, many precedents of invalid applications of similar trademarks would be supportive for them to adopt more stringent review criteria, and formed a virtuous cycle. Now we can found less and less trademarks similar with “Xihua” being approved and announced.
Comparing the above two cases, we concluded that whether or not to respond actively to trademark imitation will cause potential and significant influence on the criteria of trademark review by the Trademark Office. Once the similar trademarks applied by the imitators are left untreated, the strength of protection to one’s trademark will become less and less, until it is identical to that of an ordinary trademark, and lose the protection welfare of as famous trademark. And there will be un-measureable harm to the popularity and reputation of the enterprise’s brand, the commercial value of the trademark will be greatly reduced, due to the loss of brand rarity.
Note: Due to the occurrence of others’ famous brands, the trademarks in this article are changed.

 

 

Author：BOB IP Registration Division Jimmy Qian; TANG Jiale

Aug 27th,2014