China: Trademark Rights

Last Updated: 18 April 2017
Article by Watson & Band Law Offices

 Similar Trademarks Q&A

What are the principles of determining similar trademarks?

Article 10 of the Interpretations of the Supreme People's Court on Several Issues Concerning the Application of the Law in Hearing Civil Cases Related to Trademark Disputes stipulates the principles of determining similarity between two trademarks: "The People's Court shall apply the following principles when determining whether the marks are identical or similar:

1. The ordinary attention of the relevant public;

2. Comparing the marks in overall appearance, and comparing their essential portions with the portions viewed separately;

3. When determining whether the marks are similar, the distinctiveness and reputation of the prior mark shall be considered.

What do the terms "relevant public" and "ordinary attention" mean?

The term "the relevant public" as used by the Trademark Law refers to consumers related to the goods or service for which the trademark is used, as well as other traders who have a close relationship with the aforesaid goods or services. The Beijing High Court has held that when identifying the "relevant public", the scope of such consumers and the degree of their attention should be influenced by a series of factors including the nature, category and price of the goods concerned.1 The Association for the Protection of Intellectual Property holds that the likelihood of confusion should be determined by a person of average intelligence, attention and receptivity. 2

"Ordinary attention" refers to the general judgment of the consumer using conventional methods in daily consumption activities or operational activities without any particular effort to recognize or pay attention prior to recognition for the purpose of choosing between identical or similar goods/services under similar trademarks.3

What is an "overall comparison"?

"Overall comparison" is a basic method. Generally, most comparisons between two trademarks are done comprehensively instead of breaking them down into fragments and asserting similarity based on the fact that a portion is identical or similar. Meanwhile, it should be considered whether the main portions or distinctive portions of the two trademarks are similar enough to lead to confusion among the relevant public. If they do, they should be deemed similar trademarks.4

What is an "isolated comparison"?

An isolated comparison is performed by placing the two disputed trademarks at different times and in difference places for comparison rather than comparing them against each other directly. This kind of comparison relates to two dimensions: time and place.

The distinctiveness and reputation of a trademark are two of the factors to be considered.

Kong Xiangjun provided an expanded example of how to combine the factors of distinctiveness and reputation with the basic rules of similarity determination:5

In the legal field, there are at least three circumstances relevant to trademark similarity. The first circumstance is where neither of the trademarks is well-known. Under this circumstance, the comparison is usually focused on physical factors including pronunciation, shape and meaning, and factual similarity is important. The second circumstance is where trademarks enjoy equivalent reputations and both normally have a deep-seated context for their use (the CYTS and CITS trademarks, for example). This kind of comparison goes beyond natural elements and examines underlying factors such as the actual context of use. The third circumstance is where there is a huge contrast in the public awareness of the two trademarks. A common way to determine similarity is to single out and compare the main components of the trademarks instead of applying an overall comparison.

(Source: Introduction to the Principles of the Determination of Trademark Similarity by Ying Ying)

Trademarks applying similar concepts

"Conceptual similarity" is a special situation in the determination of trademark similarity based on geographical, social and cultural factors. As China intensifies its "open door" policy and welcomes more frequent economic and cultural exchanges, more and more concepts are being shared. It is foreseeable that we will see the increasing application of the principle of conceptual similarity in the trademark field.

In a 2004 dispute in which the COFCO Group sued Beijing Jiayu for infringement of the trademark of "Changcheng" wine, the two trademarks involved bore no obvious similarity in terms of number of characters, font, meaning, standardization or graphical layout in the context of isolated examination or cross-comparison. Nevertheless, "Changcheng" (Great Wall) in China stands for a deep-rooted image. Any form of it, either in words or in graphics, provokes a strong and unique association. Therefore, the use of "Jiayu Changcheng" on goods of the same class will impair the distinctiveness and identifiability of the COFCO's "Changcheng" products, which constitutes a similar concept. The Supreme Court held that relevant public in the wine market will easily establish a connection between the sources of these two trademarks, and ruled that Beijing Jiayu was liable for infringement due to trademark similarity.

(Source: Different Trademarks May Also be Similar: Trademarks with Similar Concepts By Wang Huayun)

What are the factors used to determine similarity between a Chinese language trademark and an English language trademark?

The ordinary attention of the relevant public should be the standard for determining whether a trademark in dispute and the reference trademark constitute similar trademarks as defined under the Trademark Law. When comparing the similarity of a Chinese trademark in dispute with a reference English trademark, the following factors should be considered – (i) the cognitive level and competence of the relevant public regarding the English trademark; (ii) the correlation or correspondence of the Chinese trademark and the English trademark in terms of meaning, reputation and distinctiveness of the reference trademark; and (iii) the actual usage of the trademark in dispute.

(Source: How to Determine Similarity between a Chinese Language Trademark and an English Language Trademark By Ding Jingwen of the Patent Litigation Department)

Footnotes

1 Article 10 of the Answers of the Beijing High People's Court to Several Issues Concerning the Hearing of Civil Trademark Cases

2 Huang Hui: The Trademark Law, Law Press China, September 2004, P117.

3 China Trademark Report, compiled by Cao Zhongqiang, Beijing, CITIC Press, 2003, P309-312

4  Zhou Yunchuan: Litigation Rules and Precedents for the Authorization and Confirmation of Trademark Rights, Law Press China, 2014, P296

5 Kong Xiangjun: FAQs on the Application of the Trademark Law, China Legal Publishing House, 2nd Edition, August 2014, P90

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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