The TRAB disregards the CTMO Classification so as to protect a famous mark against a bad faith application on dissimilar but closely related goods, in the area of mass consumer goods.
NINA RICCI, one of the leading fashion companies around the world, is the owner of the trademark “NINA RICCI” (Figure 1) covering the goods “clothing” in class 25.
In April of 2004, a natural person named SONG Guanghua applied for registration of the trademark “RICCI” (Figure 2) covering the goods “swimsuit; dancing dress; running shoes” in class 25. NINA RICCI opposed this trademark application, but the Trademark Office (CTMO) did not support the opposition. NINA RICCI appealed to the Trademark Review and Adjudication Board (TRAB).
In July of 2012, the TRAB decided that the goods respectively designated by the two marks are closely related in respect of the sales channel, consumers group, etc. and belong to the definition of similar goods. NINA RICCI’s cited mark and the opposed mark RICCI are similar marks. Accordingly, the opposed trademark is refused on the basis Article 28 of Trademark Law.
Wan Hui Da represented NINA RICCI in the case.
Click here to view Figure 1 & 2.
According to the 9th Edition of the CTMO Classification, “clothing” and “swimsuit; dancing dress; running shoes” are not similar goods. The 10th Edition effective since January of 2012 updated the Classification and recognized the similarity between “clothing” and “swimsuit and dancing dress”.
In this case, there are at least two bright spots.
- The TRAB chose the date of examination as the point-in-time for judging the facts and applied the 10th Edition, instead of the 9th Edition, which was in force at the time of the trademark application. This method gives the right owners more space and chance to attack offending marks filed in line with 9th or even earlier Editions.
- The TRAB applied a more flexible approach when examining the similarity of designated goods, and broke through the CTMO Classification, recognizing the similarity between “clothing” and “running shoes”. This tells us that Article 28 of the Trademark Law could become a good alternative legal basis to solve this kind of trademark disputes, rather than only hoping to obtain the recognition of well-known trademark when seeking protection beyond the designated list of goods.
Actually, the CTMO, the TRAB and different levels of courts are taking different views on the CTMO Classification. In the past, the CTMO and the TRAB strictly followed and applied the CTMO Classification, while the courts just regard it as a reference. However, over the years, the TRAB has been influenced by the courts and its attitude on this point is evolving. According to the TRAB’s report on the Advanced Seminar concerning Legal Practice of Trademark held in Harbin in July of 2012, the TRAB has formed one set of rule for breaking through the CTMO classification, which includes the following applicable conditions:
- The cited mark should be of strong distinctiveness/originality;
- The designated goods of the disputed trademark and the cited mark are closely related;
- The cited mark has a certain reputation;
- The disputed mark was applied in bad faith;
- The disputed mark is confusingly similar to the cited mark, and the comparison criterion is more strict than that in normal cases;
- The registration and use of the disputed trademark is likely to cause confusion among the consumers.
As its experience in examining such trademark disputes grows, the TRAB may apply and extend such flexible criteria more frequently. This will create, on the basis of Article 28 of the Trademark law, a scope of protection wider than the strict application of the Trademark Office list of similar goods and services.