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Trademarks composed of different letters may still cause confusion and thus constitute similar trademarks

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Despite the differences in the letters composing the two word marks, the similarity in terms of font, design and arrangement creates a similar overall visual effect. The coexistence of such trademarks in the market is likely to cause confusion and misidentification among the relevant public concerning the origin of goods.

Case Summary

Minnetonka has been known for its moccasins and casual footwear since 1946. Minnetonka Moccasin Company, Inc. (MMCI) is the owner of the registered trademarks “MINNETONKA” in Class 25 in China (See Image I & II). MMCI has also been using in China a variant mark (See Image III), which is not registered. MMCI’s trademarks have been recognized as highly reputable by the Beijing High People’s Court in 2014.

On June 27, 2014, a Chinese company Quanzhou Wei Deng Trade Co., Ltd. (Wei Deng) applied for the registration of the trademark “WEI DENG MOCCASIN & Device” No.14636859 (See Image IV), which was preliminarily approved and published by the China Trademark Office (CTMO) for “Gloves [clothing]” in class 25 on May 6, 2016.

MMCI filed an opposition and the CTMO ruled in favor of MMCI on September 13, 2017.

In its Decision, the CTMO finds that even if the words are different, the choice of fonts and the design (same T shape design in the middle) create a similar visual effect. The coexistence of the trademarks in the market is likely to cause confusion. Therefore, the opposed trademark should not be registered.

Wanhuida Peksung represented MMCI in the above opposition.

Comments:

The wording of likelihood of confusion appears in Articles 13.2 (protection of unregistered well-known trademark) and 57.2 (trademark infringement) of the Trademark Law (2013) but no reference is made to confusion in Article 30. Article 30 simply provides that trademarks that are identical or similar to a prior trademark, and designate identical or similar goods to those of such prior trademark, may not be registered. In absence of explicit provisions on the likelihood of confusion, the CTMO, in practice, usually bases its findings on two criteria only: (1) the similarity between signs, and (2) the similarity between the goods/services. In other words, if no similarity between signs or goods/services can be established, the opposition based on Article 30 of 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 the “likelihood of confusion” under Article 13.2 of the Trademark Law in administrative litigations. The courts should assess not only the degree of similarity of the trademarks and the goods/services, but also the degree of distinctiveness and reputation of the trademark requesting protection, the degree of attention of the relevant public and other pertinent factors. The SPC even adds that it will be possible to take into consideration the intention of the trademark applicant and the possible evidence of actual confusion. Although this article does not refer to the likelihood of confusion in trademark infringement cases (as provided in Article 57.2) and surely not in Article 30 of the Trademark Law where likelihood of confusion is not even mentioned, the SPC made it quite clear that the method defined for Article 13.2 should also apply to Articles 30 and 32, and even to Article 57.2 during the public presentation of the Provisions.

Although the SPC’s judicial interpretation does not govern the CTMO, the interpretation on the application of law has a significant influence on the CTMO’s practice. In this case, the opposed trademark used a word quite different from MMCI’s prior trademarks. However, the CTMO took into account the distinctiveness and high reputation of the cited “MINNETONKA” trademark and found that the opposed party had the clear intention to copy and mimic the cited trademark. The CTMO comprehensively considered the likelihood of confusion, which kept its practice in line with the SPC interpretation.

Moreover, this case also demonstrates the benefits of registering the trademarks used in different forms. It would be advisable to register the combination trademark and also its components, especially if they have special designs, fonts etc., to get stronger protection when fighting against the infringers.

 

Contributors: Mr. Li Yunquan & Ms. SANG Qingqing