In an administrative case involving the mark “NEXUS” applied by Google Inc. (Google) , the court of first and second instance refused the mark for registration as it is identical with the prior mark “NEXUS” of Shimano Inc.(Shimano) designating similar goods. However, on appeal to the Supreme Court, the Supreme Court accepted the trademark coexistence agreement between Google and Shimano, thus approved Google’s mark for registration and set aside the first and second instance judgments.
This case is one of the selected 27 cases concluded by the Supreme Court in 2016, the details and comments of which are as follows:
Decision of Trademark Office, Trademark Review and Adjudication Board：
The Google's mark is identical with the cited mark in terms of letter composition and pronunciation, and its designated goods “handheld computers, laptop computers” is similar to “computers for bicycles” of the cited mark, thus the two marks are similar in respect of similar goods. According to Article 28 of the Trademark Law(2001), the Google’s mark shall be refused for registration.
Judgment of First, Second Instance：
The applied-for mark and the cited trademark are identical and the products for which they are designated for use are also highly similar; thus, notwithstanding that Google and Shimano had entered into a trademark coexistence agreement, the Google’s mark shall be refused registration to maintain market order and avoid consumer confusion
Judgment of the Supreme Court：
[Key notes] No.：（2016）ZUIGAOFAXINGZAI NO. 103
First, the Supreme Court hold that there are differences between the functions, consumers of the products of the two marks; Second, although the two marks are identical with each other, there is no evidence that the co-existence of them will bring damages to the interests of the country, society or consumers. So as one of the ways the owner of the cited mark disposing of its legal rights, a consent letter issued by the owner shall be an important factor to be considered when using Article 28 of the Trademark Law to refuse applications.
Considering the differences between the marks, the goods, and the co-existence agreement between Google and Shimano, the mark shall be approved for registration.
The co-existence agreement in this case will provide guidance for future cases in which the marks are identical, but the goods have differences and the involved parties are big companies with certain fame. Nonetheless, if the goods have no difference, the involved parties are small or ordinary companies, the co-existence agreement will basically not be considered.