The China Trademark Office (CTMO) recently held that although the word marks in question were spelt differently, their similarities in terms of font, design and arrangement created a similar overall visual effect. As such, the coexistence of the marks in the market was likely to cause confusion and misidentification among the relevant public with regard to the origin of the designated goods.
Minnetonka Moccasin Company, Inc (MMCI) is the owner of two MINNETONKA trademarks, which are registered in China in Class 25 (Figures 1 and 2).
MMCI also uses a variant mark in China (Figure 3), which is not registered. In 2014 the Beijing High People's Court recognised MMCI's trademarks as highly reputable.
On June 27 2014 Chinese company Quanzhou Wei Deng Trade Co, Ltd applied for the registration of the trademark WEI DENG MOCCASIN & DEVICE (14636859) in Class 25 for gloves (clothing), which the CTMO preliminarily approved and published on May 6 2016.
MMCI filed an opposition, which was successful.
In its September 13 2017 decision, the CTMO found that even though the trademarks were spelt differently, the font and design (ie, the T-shaped design in the centre) created a similar visual effect. As such, the CTMO held that:
- the coexistence of the trademarks in the market was likely to cause confusion; and
- the opposed trademark should not be registered.
Likelihood of confusion is referenced in Articles 13.2 (protection of an unregistered well-known trademark) and 57.2 (trademark infringement) of the Trademark Law 2013. Article 30 of the Trademark Law makes no reference to confusion and simply provides that trademarks which are identical or similar to a prior trademark and designate identical or similar goods to that prior trademark cannot be registered. In the absence of explicit provisions on the likelihood of confusion, the CTMO, in practice, usually bases its findings on:
- the similarity between the marks in question; and
- the similarity between the designated goods or services.
In other words, if no similarity between the marks or the goods or services can be established, an opposition based on Article 30 of the Trademark Law will be dismissed.
In the Provisions on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights 2017, the Supreme People's Court (SPC) explained how to assess likelihood of confusion under Article 13.2 of the Trademark Law in administrative litigations. According to the SPC, the courts should assess not only the level of similarity of the trademarks and the goods or services, but also:
- the distinctiveness and reputation of the trademark for which protection is requested;
- the attention of the relevant public; and
- other pertinent factors.
Further, the SPC held that it is also possible to consider the trademark applicant's intention and the possible evidence of actual confusion. Although Article 13.2 does not refer to likelihood of confusion in trademark infringement cases (as provided for in Article 57.2) and Article 30 does not refer to likelihood of confusion at all, the SPC clarified, during the public presentation of the provisions, that the method defined for Article 13.2 should also apply to Articles 30, 32 and 57.2.
Although the SPC's judicial interpretation is not binding on the CTMO, its interpretation of the application of the Trademark Law has had a significant impact on the CTMO's practice. In this case, the opposed trademark comprised a different word to that of MMCI's prior trademarks. However, the CTMO considered the distinctiveness and well-known reputation of the cited MINNETONKA trademark and found that Wei Deng had clearly intended to copy and mimic the cited trademark. The CTMO's comprehensive examination of the likelihood of confusion was in line with the SPC interpretation.
This case also demonstrates the benefits of registering trademarks in different forms. It is advisable to register both a combination trademark and its components – especially if they have special designs or fonts – in order to secure stronger protection when fighting infringers.
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