The Trademark Review and Adjudication Board (TRAB) has found that scupper hoses in Class 17 are similar to shower pipes in Class 11 with respect to their usage, function, target consumers and sales channels.

Facts

On March 3 2011 Wuhu De Sheng Plastic Co Ltd applied to register the mark MOEN in Chinese for the designated goods "scupper hoses etc" in Class 17. Moen Incorporated filed an opposition, citing 10 prior registered trademarks for MOEN and ?? ('Moen' in Chinese) designating showers, bath basins, sinks, taps and drainpipes for bath basins in Class 11.

On July 2 2013 the China Trademark Office rejected the opposition and approved the registration of the opposed trademark, considering that, according to the Classification of Similar Goods and Services, scupper hoses in Class 17 are not similar to showers, bath basins, sinks, faucets and drain pipes for bath basins in Class 11.

On July 24 2013 Moen applied for review before the TRAB. In the grounds for review, Moen argued that the designated goods of both trademarks were similar or closely related in respect of their usage, function, target consumers and sales channels, and should be considered to be similar goods. Moen further invoked the high originality and reputation of the cited trademarks, as well as the bad faith of Wuhu De Sheng Plastic in applying for its trademark.

Decision

The TRAB ruled in favour of Moen, finding that scupper hoses are similar to shower pipes in respect of their usage, function, target consumers and sales channels. In addition, the TRAB found that, considering the high market awareness enjoyed by the cited trademarks, the coexistence of the parties' trademarks for the abovementioned goods would cause confusion and misidentification, even when observed separately. Therefore, the parties' trademarks were similar under Article 30 of the Trademark Law and the opposed trademark should not have been registered.

Comment

There are a large number of cases in which the appearance of the opposed mark and the cited mark is identical or extremely similar, but the designated goods are not. The most pragmatic and cost-effective course of action is to argue that the goods are similar.

To achieve this goal, an inherent connection between the goods is a precondition. Providing evidence of use of the marks (eg, pictures of online shopping malls) is one of the easiest ways to prove that the target consumers or sales channels are similar. In addition, providing evidence of use of the cited mark to prove its reputation in the market increases the chances of success for the owner of the cited mark. Things will also be easier if the cited mark is sufficiently distinctive. In some cases, if the bad faith of the applicant can be argued (eg, the applicant filed for a number of other famous brands or copied the English, Chinese and device marks of a single brand), the chances of obtaining a finding of similarity of the goods will be further improved.

For further information on this topic please contact Yongjian Lei or Ying Chen at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email (leiyongjian@wanhuida.com or chenying@wanhuida.com). The Wan Hui Da Intellectual Property Agency website can be accessed at www.wanhuida.com.

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