I. Case introduction:
Case number of the first instance: (2014) Yi Zhong Xing (Zhi) Chu Zi No. 6182
Case number of the second instance: (2016) Jing Xing Zhong Zi No. 3250
Appellant (plaintiff in the original trial): Puma Se
Appellee (defendant in the original trial): Trademark Review and Adjudication Board of the State Administration for Industry & Commerce of the People’s Republic of China
Third party: Shishi City Xiongbaolang Garment Development Co., Ltd.
Puma Se lodged opposition and review of opposition to the trademark “雄豹狼&DEVICE” No. 3297579 (hereinafter referred as “the opposed mark”) of Shishi City Xiongbaolang Garment Development Co., Ltd. (hereinafter referred as “Xiongbaolang Co., Ltd.”) based on their trademark “PUMA & DEVICE” IR No. 582886 (“the cited mark 1”) and trademark “DEVICE” IR No. 593987 (“the cited mark 2”). The Trademark Review and Adjudication Board (“TRAB”) ruled that the opposed mark and the two cited marks did not constitute similar marks in respect of similar goods, so the opposed mark was approved for registration. The court of first instance overruled the claim of Puma Se mainly because of the trademark No. 736710 (“the basis mark”) owned by Xiongbaolang Co., Ltd. The court of second instance did not approve the conclusion of the court of first instance that the opposed mark was the extension of the business goodwill of the prior trademark. The decisions of the original trial and of the TRAB were cancelled by the court of second instance.
II. Main facts and decisions:
The cited mark 1: Click here to view image.
The basic registration of this mark is in Germany, with the registration date of June 3, 1991. The designated goods are “clothing, footwear, headgear and etc.” in class 25. It is valid for protection in China now.
Cited mark 2: Click here to view image
The basic registration of this mark is in Germany, with the registration date of September 19, 1990. The designated goods are “clothing, footwear, headgear and etc.” in class 25. It is valid for protection in China now.
The opposed mark: Click here to view image.
The application date is September 5, 2002, with the designated goods of “clothing; layettes; swimsuits; water-proof clothing; football shoes; shoes; hats; hosieries; gloves (clothing); neckties; belts (clothing)” in class 25.
The basis mark: Click here to view image.
The application date is September 1, 1993, and the registration date is March 21, 1995. The designated goods are “clothing” in class 25. It is a valid registration now.
Puma Se submitted many evidential materials to prove the fame of the cited marks, and asked to get the cited marks recognized as well-known trademarks in China. Xiongbaolang Co., Ltd. submitted some certificates of awards of the basis mark.
The TRAB ruled that the opposed mark and the cited marks had coexisted and formed a relatively stable market order. The court of first instance ruled that the basis mark had gained certain fame through use and there was no evidence to prove that the coexistence of the opposed mark and the cited marks had caused any confusing or misleading results; as the opposed mark was identical to the device part of the basis mark and the goods of two marks were the same or similar, the business goodwill of the basis mark could certainly be extended to the opposed mark; thus the coexistence of the opposed mark and the cited marks on the same or similar goods would not be likely to cause confusions among consumers as of the origin of goods. The court of second instance ruled that the registrant held independent trademark rights on their different trademark registrations. There was no certain extended relationship between the prior mark and the later mark. The changes made by Xiongbaolang Co., Ltd. to the prior mark increased the possibility of confusion among common consumers, which could not be deemed as justified. Therefore, the decisions of the TRAB and of the original trial were incorrect in law application, which should be cancelled by law.
III. Analysis and further thoughts
The decision of the court of second instance clearly indicates: the key issue to consider in determining whether the later trademark application of the same registrant is an extended application of the prior registration is, whether the prior trademark registration has gained certain fame through use, which therefore leads the relevant public to connect the later-filed identical or similar trademark application with the prior trademark registration and to believe the goods bearing the two marks come from the same trademark registrant or have certain relationships.
When examining the business goodwill extension of the prior trademark registration, the court of second instance has mainly considered the following factors:
The time of application of the basis mark’s and of the cited marks’: the filing date of the basis mark of Xiongbaolang Co., Ltd. is later than that of the two cited marks of Puma Se;
The use evidences and fame of the two parties’ marks: from the use evidences, it can hardly be determined that the basis mark is obviously more famous than the two cited marks;
The comparison between the prior mark and the later mark: comparing to the basis mark, the opposed mark is more similar to the cited marks;
The comparison between the goods of the prior mark and of the later mark: the basis mark is only approved on “clothing”, and the goods covered by the opposed mark are broader.
Based on the above analysis, the court of second instance has ruled, Xiongbaolang Co., Ltd. made the opposed mark more and more similar to the cited marks by changing the prior marks’ sign and extending its designated goods. These changes increase the possibilities of confusion among common consumers. Thus, the court of second instance does not approve the conclusion of the court of first instance that the opposed mark is an extended application of the prior mark based on its business goodwill.
As the representative of Puma Se, the writer has the following further thoughts:
When the so-called “basis mark” No. 736710 was filed for application, Puma Se lodged opposition and review on opposition to it. However, at that time, a) TRAB’s decision was final, which was not submitted to judicial review, b) Puma’s goods in China were mainly footwear, and c) clothing and footwear were strictly considered as dissimilar; so this mark was approved for registration on “clothing”. To those “edge ball” trademark registrations caused by historically reasons, we suggest the client trying best to keep them in the scope of the already registered signs and goods. If their registrants make them more and more similar to the clients’ marks by amending the sign and the goods, we would suggest clients firmly cracking down on such activities.
Nowadays, there are some entities and individuals who try to copycat others’ famous marks “step by step”: filing an application which is not very similar to the target mark first, with the goods closely related but not the same or similar, then subsequently filing several amended applications with slightly different signs and broader goods description; the later marks are more and more similar to the famous mark, and finally the aim of copycat is accomplished.
In this particular case, the court of second instance has mainly analyzed four factors. The writer believes that the four factors are serving the same key issue, namely, whether “it increases the possibility of confusion among common consumers”. In other cases, the factors being considered could be more or less. However, as long as the application of the later mark would increase the possibilities of confusion among common consumers, it should not be approved for registration by simply adopting the theory of extended business goodwill of the basis mark.