The 2014 annual report of intellectual property cases issued by the Supreme People's Court contained a report on an administrative court appeal involving a Chinese individual named Gao Wenxin and De Beers Centenary AG. (Case (2014) Zhaixingzi No. 49). The main issue in the case was whether the disputed Chinese character mark 永恒印记 (YONG HENG YIN JI) was deceptively similar to the cited English language mark FOREVERMARK, in relation to the same/similar goods. This article considers how similarity between a Chinese mark and an English mark should be judged.
Similarity of the marks
The most important consideration, when judging whether or not two marks are similar for the purposes of China’s Trade Mark Law, is whether there is likely to be confusion among the relevant public in China. Normally, a Chinese mark and an English mark are phonetically and visually different. Their conceptual similarity will therefore usually be the key factor we need to focus on, taking into account the following:
1. The level of awareness of the meaning of an English mark amongst the relevant public.
It is common for schools at different levels in China to provide English lessons, even at the kindergarten level. Many primary school students are even able to provide basic presentations on their study and life in fluent English, using common English words. Chinese consumers would recognise “Forever” and “mark” as commonly used English words. Therefore, the cited mark FOREVERMARK would be easily recognized as a combination of the words “FOREVER” and “MARK” by the relevant Chinese public, and consequently would be considered similar to the Chinese mark in terms of meaning.
2. Correlation and congruity of the meanings of both marks.
According to Chinese-English dictionaries, “永恒印记”, i.e. the disputed mark, is translated as “forever mark”. According to the English-Chinese dictionaries, “forever” and “mark” are translated as “永恒印记”, i.e. the disputed mark. Given that the cited mark FOREVERMARK is easily recognized as the combination of “FOREVER” and “MARK”, it is easy for the relevant public to recognise that the disputed mark correlates to the cited mark and that they are both congruous in terms of meaning. As a result, the marks concerned are very likely to be considered similar by the relevant public.
3. Fame and the extent of use of both marks.
Pursuant to Article 4 of the Trade Mark Law of China, "Any natural person, legal person or other organization that needs to obtain the exclusive right to use a trade mark for its goods or services during production and business operations shall apply for trade mark registration with the Trademark Office". The purpose of registering a mark is to be able to legitimately use the mark in the commercial marketplace and to prevent others doing so. If a mark is widely used in the Chinese marketplace and has acquired a certain reputation among the relevant public, the distinctiveness of the mark will be increased and the risk of confusion with other marks reduced. In this case, the owner of the disputed mark did not submit evidence of actual use of the disputed mark on the claimed goods, namely jewellery, but only in relation to jewellery processing services, and as a trade name. If evidence of use in relation to jewellery had been submitted, it may have been easier to establish that the disputed mark enjoyed a certain reputation among the relevant public. Without such evidence, it is difficult to see how the disputed mark would be distinguishable from the cited mark, especially when the cited mark had been used to some extent on the same/similar goods before the filing date of the application for registration of the disputed mark. Whether or not confusion is likely, depends mainly on whether two marks are considered similar when they are used in the commercial marketplace. Thus, the actual use of a registered mark is very important
Application of laws
The judge of the Supreme Court also held in her decision that the courts of first and second instance had cited the incorrect article (Article 28) in their decisions. However, given that the correct article, Item 3 of Article 41, is substantially consistent in terms of legal standards, the incorrect citation did not have a substantive impact on the decision.
It is arguable that Article 28 can be cited in an infringement action, even though it applies to oppositions to registration following the publication of acceptance of an application. As held by the judge, given that the correct Article, i.e. Item 3 of Article 41, which relates to dispute procedures, is substantively consistent with Article 28 in terms of legal standards, the disputed mark might have been rejected during the application stage. The judgment also makes it clear that Item 3 of Article 41 provides a ground on which brand owners may appeal if they are initially unsuccessful in an opposition against an applied-for mark that is similar to their own prior registered mark. Therefore, the principles expressed by Article 28 may be cited to judge the similarity between the disputed mark and the cited mark; however, Item 3 of Article 41 will be relied on the by the courts when determining the issue.
Lessons to be learned
The Supreme Court’s decision, makes it clear that the following points should be given careful consideration when designing, using, and applying to register a trade mark, and when taking legal action in relation to the mark.
- When applying to register a mark, make sure to search for translations of the mark in Chinese/English in order to ensure that there is no prior registration of a mark in the other language with the same or similar meaning. If there is a prior registration, think carefully before filing the application.
- Make sure you put your registered mark to use in relation to the relevant goods or services.
- The same standards for assessing similarity apply whether prosecuting an application or considering a dispute.