THERMOWATT is an Italian company founded in the 1950s and currently is the leading manufacturer brand of sheathed heating elements and thermostats for water heaters, domestic and commercial electric appliances.
Recently, THERMOWATT succeeded in opposing the registration in China of the trademark “THERMOVVAT” No. 14875686 filed by Fenghua City Shenyi Shenli Electric Appliance Co. Ltd. in Class 9 for “thermostats; thermometers, not for medical purposes; resistances, electric, etc.”.
The original trademark contains the letter “W” while the copy contains the two letters “V V”. What is surprising is that the China Trademark Office (“CTMO”), despite the fact that supposedly it made a substantive examination before granting a trademark, did not stop the application by rejecting the trademark and the trademark application was preliminary approved and published for opposition.
Why do we pick up this case? It might seem an easy case which does not need to talk about. On the contrary, we believe that this is a very specific case where the CTMO misses stopping the registration of very similar trademarks. We do not know whether this is a policy or a mistake, anyway we wish to take the chance to remind that if the owner of the prior right does not act to have its right protected and thus prevent the similar trademark from registration, later it will become quite difficult (and for certain literally impossible) to stop selling fake products since the registered similar trademark might work as a shield.
Don’t lose the temper if the CTMO misses protecting your trademark, be calm and go with proper actions to stop the infringement: opposition.
Herein is a quotation directly from the CTMO decision:
“Based on the grounds and facts stated by the parties, after examination, this Office holds that The Opposed Trademark “THERMOVVATT” is designated on the goods of “switches, electric; resistances, electric; thermostats, etc.” in Class 9. The prior registered No. 1417503 for “THERMOWATT & Device” trademark cited by the Opponent is approved to use on goods of “thermostats; thermometers, not for medical purposes; resistances, electric, etc.” in Class 9. The designated goods of the both parties’ trademarks are identical and similar in terms of functions and use, so they have constituted same or similar goods. Besides, the trademarks are also basically identical in terms of word component and overall vision. Thus they have constituted similar trademarks being used on the identical or similar goods. In accordance with Articles 30 and 35 of the Trademark Law, our Office hereby makes the decision that the Opposed Trademark No. 14875686 for “THERMOVVATT” shall be rejected for registration.”
HFG represented THERMOWATT in the case.