—How to Judge Goods or Services of high correlation—
Introduction: A trademark is used to identify and distinguish the source of goods or services. To determine the similarity between two trademarks, it would be a deviation from the basic attributes of trademark without the consideration of the related goods or services of the trademarks. Therefore, in handling trademark cases concerning trademark rights authorization, trademark rights affirmation, and trademark infringement, we shall consider the appropriate provisions of the laws as well as keep the right perspective on the protection of prior rights in similar products and services. And, the Classification Table of Similar goods and Service (hereinafter as Classification Table) shall be deemed as authoritative basis for judgment of the similarity between the goods or services of the opposed trademark and the cited trademark.
However, with the rapid development of modern market economy, not only the way of commodity transaction, consumer habits, and consumer psychology has changed, but the similarity of goods/services has also changed with this trend. As a result, the Classification Table can hardly include of all the new goods and services emerged, and part of the existing identification standards has also caused confusions and contradictions in real market transactions. Trademark squatting phenomenon occurs more frequently in the forms of “free rider”, “imitated brands”, and etc… If we simply abide by the Classification Table strictly, it would be hard to curb the trademark squatting activities with obvious malice, and it would be hard to maintain fair competition and protect the legal benefits of the consumers. Therefore, under said the present conditions, it is necessary to study the changing rules for identification of similar goods/services, and make appropriate breaking in the principles of the Classification Table according the fact of the cases. And such breaking of the principles will contribute to the fair trial of the cases, and achieve the unity of its legal and society effects.
This article makes a preliminary study on the topic of how to break the principles of the Classification Table and identify the high correlation of goods and services between the opposed trademark and the cited trademark in our daily practice.
I. Basic principles and requirements on breaking of the Classification Table
Through many review cases and theoretical articles published by the judges of the TRAB (Trademark Review and Adjudication Bureau), we found that the TRAB has the following conditions and principles on breaking the Classification Table:
1. The opposed trademark is of high similarity with the cited trademark
2. The goods/service used on the opposed trademark shall have a close correlation with the cited trademark
3. The cited trademark has high prominence and originality
4. The cited trademark has a certain reputation
5. The opposed trademark has an obvious malicious intention
6. The registration and use of the opposed trademark will cause confusion to related consumers
Except for the above mentioned requirements, there are two rules to be followed for breaking the Classification Table in trademark trials. The first is “Case by case analysis”; the second is only using this method when there are no other applicable provisions.
This paper will mainly make a further discussion on the principle of “the goods and services have a close correlation”.
II. Cases Introduction
The author has collected some typical cases about breaking the Classification Table, in the hope of understanding the part of the rules, and to provide reference for handling similar cases.
Case I: “Shi Tai Sheng(世泰盛)” trademark Opposition administrative disputes (appropriate cross-class protection of time honored brand)
Key words: cross-class protection, principle of honesty and credibility
Opposed trademark: Wuxi Yuda Textile Co., Ltd. “Shi Tai Sheng(世泰盛)” trademark (Class 7 printing machines, textile machines and etc., Class 24 cloth, cotton and etc., class 36 insurance, capital investment and other services, Class 39 freight, transportation and etc., class 43 accommodations (hotels, boarding houses), cafes and other services)
Cited trademark: Wuxi Shi Tai Sheng trade co., ltd. “Shi Tai Sheng” trademark (Class 25 clothing and etc, Class 35 help in the management of the business affairs)
TRAB ruled that: “Shi Tai Sheng” is a trademark used by a century-old silk shop in Wuxi, and it was identified by the Ministry of Commerce as “Time-honored Brand of China“. It is very famous in the local area, and the trademark itself is of high commercial value. As a textile enterprise in Wuxi, Yuda Company should be fully aware of the Shi Tai Sheng brand. Its trademark registration in Class 24 cloth, cotton goods and etc., would lead to the relevant public to connect its products with Shi Tai Sheng Company, and damage the benefits of Shi Tai Sheng Company. And its trademark registration with “Shi Tang Sheng” in Class 7 for printing, textile machines and other commodities, and in class 36 for insurance, capital investment and other services, Class 39 for freight, transportation and other services, and class 43 for accommodation (hotel, boarding house), cafes and other services, has an intention of deliberately taking advantage of other’s famous trademark improperly, as “Shi Tai Sheng” word combination has a strong originality, the registration of the opposed trademark will cause confusion of the source of the goods by the relevant publics, and lead to damage to the benefits of Shi Tai Sheng company. Yu Da Company’s registration behavior should be stopped as it violated the principle of good faith, and went against the establishment and maintenance of normal market order. Accordingly, the registration of opposed trademark on the above mentioned goods or services constitutes an infringement to the prior rights of trade name as stipulated in Article 31 of Trademark Law.
Case 2: Honda removed the “Accord” Lock
Keywords: consumer overlap ratio
Opposed trademark: No. 4442873, “Accord YAGE and device” trademark (Class 6 for metal lock (non-electric), spring locks, padlocks, metal locks for vehicle use, and etc.)
Cited trademark: No. 1581858, “Accord” word mark (Class 12 for cars, motorcycles, bicycles, and etc.)
Trademark Office and TRAB have determined that “car” and “lock” are not in the same category, and there are differences in the areas of production process, distribution channels, target consumers, functions, usage, and etc., and thus the registration of the opposed trademark should be approved. And the first and second instances court both held that the goods of the two trademarks to be used on are not similar.
The review court deemed that although cited mark was not recognized as well-known trademark, it did have a certain degree of reputation, and the consumers of cars and motorcycles overlapped to a certain degree with the consumers of locks of automobiles and motorcycles. Therefore, the review court held that the consumers of the locks of automobiles and motorcycles will be confused and mistake it for having a relationship with Honda’s automobiles and motorcycles.
Case 3: “Tong Han Chun Tang” won the trademark opposition against “Tong Han Chun”
Keywords: consumer habits – “Medicine food homology” food culture and health care traditions
Opposed trademark: No. 3698897, “Tong Han Chun” trademark (Class 30 honey for food, non-medical royal jelly, non-medical nutrition solution, non-medical nutrition cream, non-medical nutrition powder, non-medical nutritional capsules, non-medical chewing gum, tea, candy, and etc.)
Cited Trademark: No. 1128730, “Han Chun and device” trademark (class 5 for Chinese medicine tablets, Chinese patent medicine)
The TRAB ruled that, although the honor evidence submitted by Shanghai Tong Han Chun Tang company can prove the “Tong Han Chun Tang” trademark has already got a certain degree of reputation on its “Chinese herbal pieces” products before the filing date of the opposed trademark, there are some differences in the aspects concerning main raw materials, function and usage, sales channel, sales location, and target consumers and etc.. Therefore, the registration of the opposed trademark will not constitute damage to the prior rights of Tong Han Chun Tang Company.
Court of First Instance: The trade name of “Tong Han Chun Tang” or the series of its trademarks are mainly used on traditional Chinese herbal pieces products, while the opposed trademark is assigned to be used on non-medical nutrition solution, non-medical nutrition cream, non-medical nutritional capsules and so on, all these products belong to the medicine and healthcare products category, and aim to ensure the health of consumers, with similar product function and usage. Moreover, non-medical nutrition solution, non-medical nutritional capsules, served as important auxiliary products of medicines, are usually sold through the same or similar sales channels like pharmacies, hospitals and other specialized health-care units at the same time to the same or similar consumers.
Court of second instance: Tong Han Chun Tang submitted enough evidence to prove that “Tong Han Chun Tang” trade name has a high level of reputation on “Chinese herbal pieces” and other goods. Because of the ancient “Medicine food homology” food culture in China, there is a close relationship between the product category assigned for the opposed trademark class (honey for food, non-medical royal jelly, non-medical nutrition solution, non-medical nutrition cream, non-medical nutrition powder, non-medical nutritional capsules, non-medical chewing gum, tea, candy, and etc.) and the “Chinese herbal pieces”. The two product ranges are closely related in terms of main raw materials, function and usage, distribution channels, sales locations, target consumers and etc., and constitute a relationship of similar goods.
Case 4: A trademark war between “Jiajia soy sauce” and “Jiajia sesame oil”
Keywords: If a product has different types of consumers, the opinions of the consumers with a lower attention level should be adopted for the recognition of similar products.
Opposed trademark: No. 1482338, “加加JIAJIA” trademark (Class 29 sesame oil)
Cited Trademark: No. 1321453, “加加JIAJIA” trademark (Class 30 soy sauce, vinegar, spices, gourmet powder, oyster sauce, etc.)
The TRAB ruled that: The main raw materials, production processes, and sales channels of the products of opposed trademark (Class 29, sesame oil) and the 3 cited trademarks (class 30, soy sauce, vinegar) are quite different, and do not belong to similar goods. Usually, the opposed trademark is hard to cause confusion to consumers, therefore it does not constitute similar trademark used on similar goods.
Court of first instance: As the “sesame oil” product of the opposed trademark and the “vinegar, spices, oyster sauce” products of the cited trademarks have same functions as condiments, and have no big difference in sales channels, consumer groups, they should be treated as similar goods. Moreover, judgment of similar goods should be made with references to the factors like trademark reputation, and consider from the angle of whether it will cause confusion of the product source to consumers.
Court of second instance: As investigated, in the “national standards of condiments classification” implemented since September 1, 2007, “sesame oil” has been listed as a condiment. According to the article 15 of “Several opinions on the trial of administrative cases for trademark rights by the Supreme Court”, to judge whether the goods are similar or not, we need to consider whether they are the same or have a close correlation in their functions, usage, production, sales channels, and consumer groups, which will make the relevant public believe they are supplied by the same subject, or their suppliers have a special relationship. According to the facts found, sesame oil is mainly sold to the average consumers as condiment, packaged in small bottles similar to the packaging of sauce and vinegar, which is distinctively different with other edible oils. Edible oils and fats as edible oil are more important as a raw material, rather than a standalone product. For other usages of sesame oil, such as raw materials for other products, on the one hand, the product usage should based on the main product usage; on the other hand, If a product has different types of consumers, the opinions of the consumers with a lower attention level should be adopted for the recognition of similar products. In this case, the household consumer should be considered as the relevant public. And for these ordinary consumers, it is common sense that sesame oil is a kind of condiment.
Case 5: The competition between Industrial and household adhesive
Keywords: overlap of function and use
Opposed Trademark: No. 1632720, “Tongsheng” trademark (class 16 stationery or household adhesives (glue), stationery and household tape, stationery or household glue, stationery or household fish glue, stationery or household gluten glue, etc.)
Cited trademark: No. 1056114, “Tongsheng” trademark (class 1 industrial glue, super glue, heat-resistant glue, instant adhesives, synthetic resin, non cohesive gel, tile adhesives, wood adhesives, etc.)
The TRAB ruled that: Although the opposed trademark and the cited trademark are identically same in characters, but the adhesives products are authorized for household use and industrial use respectively, they are different in terms of production and sales, target consumers, etc., and therefore they did not constitute similar trademarks on identical or similar goods, therefore the application of the opposed trademark does not violate Article 28 of the Trademark Law.
Court of second instance: Judgment of similar goods should consider whether the goods are the same in terms of function, use, production, sales channels, consumer groups, etc. , or whether the trademarks and confusing and will make the relevant public believe there are special relationship between the goods. In this case, the opposed trademark in class 16 for stationery or household adhesives (glue), stationery and household tape, stationery or household glue, while the cited trademark in Class 1 for super glue, heat-resistant glue, instant adhesives, and other industrial glues. Although they are in two different classes, but both have glue function, and overlap in product applications, meanwhile, the channels are also common, the relevant public will tend to think there is special relationship between the two trademarks, and led to confusion. Therefore, the goods of the opposed trademark and the cited trademark constitute similar goods.
III Conclusion and analysis
A conclusion can be made through the above analyses: In the current judicial review process of the court, the standard of trials is quite different with the standard of review by the TRAB. We hold the opinion that, in order to break the classification table, when considering the factors like the brand reputation as well as the opponent party’s malice, it is still of great value to discuss the correlation between the goods of the two trademarks.
According to our experience from practical operations, and based on an analysis of a large number of cases, on the topic of achieving similar products judgment through the discussion of correlation degree of concerned goods, we summarize the key points as follows:
(1) Whether the function and use of the goods are similar;
(2) Whether the raw materials and ingredients of goods are similar;
(3) Whether the sales channels, sales location are overlapped;
(4) Whether the goods has a complete set and component relationship;
(5) Whether the manufacturer, consumer of the two goods overlap
(6) Consumer habits for identification of the related goods;
It is believable that as long as we make full discussion from the above points, and supplement with brand reputation evidences, as well as the evidence of opposed party’s malicious intention, it is possible that we can break the limit of the classification table, and prevent the malicious imitation by the trademark squatters.
Author:BOB IP Registration Division Yao Xiaoqing
Nov 20th,2014