On 3 September 2020 the Chinese smartphone giant Xiaomi prevailed in an opposition action against a device comprising the words "Orange Mi" in Chinese and the letters "cnmi" (Figure 1).
Figure 1: "Orange Mi" device
The case was selected as one of the Chinese Trademark Office's exemplary trademark opposition and adjudication cases of 2020.
On 7 July 2012 Xiaomi registered its iconic MI device in class 9 (Figure 2). Later in July 2012, Xiaomi registered the MI logo as a work of fine art with the National Copyright Administration. Xiaomi expanded its trademark portfolio by registering the logo in class 7 on 21 February 2018 and 14 April 2019.
Figure 2: MI device
On 31 August 2018 a Chinese company, Quanzhou Guangyu E-commerce Ltd, applied to register the "Orange Mi" trademark (33255177) in respect of "blenders; ironing machines; washing machines [laundry]; household soybean milk makers; electric shoe polishers; 3D printers; vacuum cleaners, among others" in class 7.
On 13 March 2019 the application was published. On 13 June 2019 Xiaomi filed an opposition action, citing, among other things, its prior trademark registrations in class 7 and its copyright.
The examiner found the arguments tenable and decided to uphold the opposition. The examiner adopted a methodical approach in analysing the case. In assessing the similarity of the marks, the following facts were considered:
- The Chinese characters of the opposed trademark were semantically correlative to Xiami's trade name and Chinese trademark.
- The goods of the opposed trademark and those of the cited trademarks were closely associated.
- The opposed party had intended to imitate the cited trademark, taking undue advantage of the opponent's goodwill.
In ascertaining damages to Xiaomi's prior copyright, the examiner focused on the below parameters:
- proof of prior proprietary copyright – prior to the application of the opposed trademark, the opponent had secured its own trademark registration of the MI device. This corroborated that Xiaomi was the copyright owner of the work of fine art;
- substantial similarity – the assessment of substantial similarity in the sense of the Copyright Law hinges on whether the opposed trademark incorporates the original features of the copyrighted work. This may be limited to a part of the opposed trademark; and
- likelihood of contact – the fact that the cited trademark had been extensively used as the opponent's main commercial sign established that the opposed party had been in contact with the device and had intentionally tried to create confusion.
In practice, the originality of a sign consisting of stylised letters may be questioned by the authorities. Since the registration of copyright does not involve substantial examination, a sign whose originality is questioned may be denied copyright protection, even if a copyright registration certification has been acquired. It is therefore to be welcomed that the Trademark Office seems to be open to use all available measure to curb bad-faith filings. This case further illustrates that the authorities are increasingly considering the trademark applicant's intentions.
For further information on this topic please contact Yang Mingming at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.