Lian Jianyong (the legal representative of Xinle San Xing Yuan Electric Co., Ltd.) vs. TRAB & Samsung Electronics Co., Ltd. (Samsung) L

ian Jianyong filed an application in the CTO on 1 December 2005 for registration of the trademark – “三星缘 SAN XING YUAN” (Application No.5036461) with regards to electrically heated carpets, electric radiators, heating radiators, pocket warmers, etc. in class 11. Samsung filed opposition proceedings against this application based on its prior registration of its name in Chinese “三星” (Registration No.3169823) covering refrigerators, cooling appliances and installations, central heating pipes, etc. in class 11.

Upon reviewing the opposition proceedings, the CTO decided to reject the opposition proceedings filed by Samsung and approved the registration of the trademark application. On appeal, the TRAB decided to accept Samsung’s claims and order that the applicant’s trademark application be rejected on 25 June 2012, based on the similarity of the goods – the TRAB felt that there was a high correlation in terms of function, usage, sales channels and consumers, and the similarity of the marks in respect to character constitution, pronunciation and significant recognition. Implied in its decision, was a concern that confusion was likely.

The applicant appealed to the Beijing No.1 Intermediate Court, on the grounds that its trademark had obtained a strong reputation in China, through significant use (such that confusion was unlikely). The court maintained the TRAB’s decision and concluded that the marks were similar, since the “三星缘 SAN XING YUAN” mark completely covered the “三 星” mark (Samsung’s Chinese character name), and the pronunciation and meaning of the two marks were similar. Futher, the court concluded that the goods in both the application and Samsung’s prior existing registration, were temperature regulating devices, and therefore, they constituted similar goods. Thus, the court held that the TRAB’s conclusion that the registration of trademark application violated Article 28 of the Trademark Law was correct.

The applicant then appealed to the Beijing Higher Court on the grounds that the goods covered by the application and those covered by Samsung’s prior existing registration were not similar, and were listed in different goods groupings by the CTO itself – respectively 1111 and 1105 in the CTO Classification Table of Similar Goods and Services. The Higher Court issued its decision on 4 June 2013, overturning the decisions made by the Intermediate Court and the TRAB, on the grounds that the goods included in the trademark application were all heating supply devices, whilst the goods covered by Samsung’s prior existing registration were mainly cooling supply devices – the court concluded that the goods were different in relation to function, usage and sales channels. Further, the evidence filed by the applicant proved the trademark application had been put into commercial use over several years, and that the company named as “SAN XING YUAN” was established before Samsung’s filing of its registration for its name in Chinese characters, so the trademark application was considered to not have been filed in bad faith. The court noted that neither Samsung nor the TRAB had filed evidence proving the cited “三星” mark was well known in China, which would be needed to win this case, as the corresponding goods were found to be dissimilar by the Higher Court.