1. Case Facts

De Beers Century Co., Ltd. (hereinafter “De Beers”) registered and used “FOREVERMARK” as its trademark. Subsequently, an individual named Wenxin Gao registered the disputed trademark “永恒印记” for the manufacturing and distribution of his own company. De Beers disputed the registration by asserting that the disputed trademark is similar to its registered English language trademark “FOREVERMARK”, which assertion was supported by the Trademark Review and Adjudication Board (hereinafter“TRAB”). Wenxin Gao then filed an administrative lawsuit, during which proceedings the trial court and the appellate court both ruled that the two trademarks were similar. Wenxin Gao objected to the appeal judgment and filed a petition for retrial with the Supreme People’s Court.

  1. The Parties Arguments

Wenxin Gao, the retrial petitioner, asserted that (i) he registered the disputed trademark “永恒印记” for his own manufacturing and operational needs and actually put the trademark into use, which acts in no way indicated any intention to obtain a free ride from the De Beers reputation; (ii) the disputed trademark and the cited trademark are not similar because (a) their overall visual effects are different –the disputed trademark is composed of Chinese characters while the cited trademark is composed of a series of letters; (b) their meanings are different – “FOREVERMARK” is a series of letters that is not equivalent to “FOREVER MARK”, i.e., it can also be split into“FOR EVER MARK”, and consequently will not be associated in any way with the disputed trademark; and even if it is interpreted as“FOREVER MARK”, its corresponding Chinese translation would be “永久记号” or “永恒痕迹” and the like, which is also not similar to the cited trademark; (c) the two trademarks are not similar in the general understanding of Chinese consumers – the disputed trademark is a Chinese word mark that is readily recognizable to Chinese consumers, while the cited trademark is an English word mark that requires certain English language skills to recognize; and (iii) the identification of similarity between two trademarks should comprehensively consider elements such as reputation, distinctiveness and usage of the trademarks: (i) the disputed trademark has already been extensively used and through its long-term advertising has gained a substantial reputation that can identify the source of the goods, whereas there is no evidence of the reputation of the cited trademark; (ii) the disputed trademark is more distinctive and incorporates extremely high originality and distinctiveness because “印记” is not a commonly used word, whereas the cited trademark is an existing English word that incorporates less distinctiveness; and (iii) De Beers has never actually used “永恒印记” and does not have any valid prior trademark.

De Beers argued that since the disputed trademark and the cited trademark are similar trademarks used on similar goods, the disputed trademark should be revoked.

  1. Supreme Peoples Courts Opinion

The general understanding of Chinese consumers should be used as the standard for identifying whether or not the disputed trademark and the cited trademark constitute similar trademarks under the Trademark Law. When identifying similarity between a disputed Chinese language trademark and a cited English language trademark, the following elements should be considered: (i) the ability of Chinese consumers to recognize the English language trademark; (ii) he relevance or correspondence in meaning between the Chinese language trademark and the English language trademark; (iii) the reputation and distinctiveness of the cited trademark; and (iv) the actual usage of the disputed trademark, among other factors.

  1. The ability of Chinese consumers to recognize the English language trademark.

Two elements are involved in this determination: (i) the ability of Chinese consumers to recognize English language words; and (ii) the frequency of use of the word contained in the cited English language trademark. The nine-year compulsory education system has been adopted in China for years, during which period English has been one of the most popular courses; moreover, English is also one of the most important subjects included in the University Entrance Exam. Consequently, the Chinese public should enjoy a certain ability to recognize frequently used English words. According to standard spelling and pronunciation rules, Chinese consumers should easily recognize “FOREVERMARK” as “FOREVER MARK”. In the meantime, since “FOREVER” and “MARK” are both frequently used simple words, it can be established that Chinese consumers can readily understand the Chinese meaning of the cited trademark and will easily associate the cited trademark with its corresponding Chinese meaning.

  1. Relevance or correspondence in meaning between the Chinese language trademark and the English language trademark.

Relevance and correspondence can be considered from either of the two perspectives -- translation from Chinese into English or translation from English into Chinese. ”FOREVERMARK” can be translated into “永恒印记”, while “永恒印记” can also be translated into “FOREVER MARK”. It is therefore clear that the two trademarks are actually corresponding in meaning and that Chinese consumers will easily confuse them with each other. When the disputed trademark and the cited trademark are used on identical or similar goods, Chinese consumers, using their general observation, are likely to mistakenly believe that the goods come from the same source or that there is a particuloar connection between the two sources.

  1. Reputation and distinctiveness of the cited trademark.

According to the evidence provided by the parties, De Beers advertised and used the cited trademark in domestic newspapers before the filing date of the disputed trademark in the form of premium sales, thereby bestowing the cited trademark with a substantial reputation.

  1. Actual use of the disputed trademark.

The evidence submitted by Wenxin Gao mainly consists of evidence of use of the disputed trademark as his enterprise name and in advertising for his jewelry processing services. Since the usage under the class of goods approved for the disputed trademark was relatively limited, this evidence is insufficient to prove that the disputed trademark already enjoys a relatively high market reputation through actual use, let alone that Chinese consumers can readily distinguish the disputed trademark from the cited trademark.

In conclusion, the Supreme People’s Court held that the trial court and the appellate court were both appropriate in determining that the disputed trademark and the cited trademark are similar, and therefore did not support Wenxin Gao’s retrial petition.

  1. Practical Implications

The increasing involvement of the English language in daily life as an international language due to globalization has brought new challenges to traditional trademark law. The issue of similarity identification between a Chinese language trademark and an English language trademark has been drawing increasing attention from both the courts and trademark rights holders. As the Supreme People’s Court noted in its judgment, when determining whether or not a Chinese language trademark and an English language trademark are similar in practice, a number of elements should be simultaneously taken into consideration. Nevertheless, the author notes that it is prudent to balance the significance of the various elements during the determination process.

First, the ability of Chinese consumers to recognize an English language trademark should be considered. This is to some extent a precondition for determining similarity between trademarks, i.e. if Chinese consumers cannot recognize an English word, it will be unnecessary to discuss similarity with a Chinese language trademark.

Secondly, the Chinese language trademark and the English language trademark should be closely related (e.g. they should be identical or similar in meaning) and they should be used on similar goods in a manner that renders public confusion likely.

In addition, the reputation of the cited trademark and usage of the disputed trademark should also be considered as a supporting element. For example, when considering the reputation of the cited trademark, it is unnecessary to require that the trademark be very well-known; however, the cited trademark should be more familiar to Chinese consumers than the disputed trademark within the relevant class of products. Likewise, the usage of the disputed trademark should not be determined solely by the scale of manufacturing or the sales revenue; instead, if the disputed trademark is extensively used and is familiar to the public within a major production and distribution area, then even if use of the disputed trademark is not very prevalent in other areas, the disputed trademark can still be deemed distinctive to some extent and can be distinguished from the cited trademark.

In conclusion, since the determination of similarity between a Chinese language trademark and an English language trademark involves considerable subjective and geographic concerns, a comprehensive analysis should be undertaken based on the specific facts of each case, so as to avoid any unfair consequences due to an overbroad resolution of the issue.