Article 30 of Trademark Law "Where a trademark to be applied for registration is in nonconformity with the relevant provisions of the Law, or it is identical with or similar to the trademark of another person that has, in respect of the same or similar goods, been registered or preliminarily approved, the Trademark Office shall refuse the application without announcement" is one of the most widely used articles in rejections by the National Intellectual Property Administration, PRC ("CNIPA" hereinafter).
Arguing the dissimilarity of the marks is one of the important parts in the trademark review cases when the trademarks are rejected due to relative reasons. Standards for Trademark Examination and Trial clearly list some standards whether trademarks are considered as similar to each other. This paper analyzes the dissimilarity arguments between graphic trademark and graphic-word trademark in review of refusal from a specific case.
MIROSHNYKOV YEVHEN HENNADIIOVYCH ("the applicant" hereinafter) filed an application for registration with WIPO on February 7, 2019, designating China as one of the extension countries, with the trademark of (the "subject trademark" hereinafter), with the international registration No. of 1449066, and designated in Classes 16, 25 and 41. The CNIPA holds that the subject trademark is similar to marks (No.6993988), (No.10805411) and (No. 6994064), thus partially rejected the extension of protection of the trademark in Class 16, and completely rejected the extension of protection of the trademark in Classes 25 and 41. In addition, the CNIPA holds that the item "banknotes" are not accepted in China for the purpose of trademark registration, and should not be approved.
Entrusted by the applicant, our company submitted a review of refusal for the subject trademark. In the review arguments, we discussed in detail that the subject mark is not similar to cited marks in overall appearance, distinctive parts, pronunciation and meaning, the relevant public can distinguish the subject trademark from the cited trademark with general attention. Therefore, the subject trademark and the cited marks are not "similar marks over similar goods."
Finally, the CNIPA issued a decision of review of refusal, the extension of protection of the trademark over "banknotes" in Class 16 was rejected, and the extension of protection of the trademark over the rest goods/services was approved.
The graphic part of the subject trademark is indeed similar to cited marks and Thus, if the argument is only based on the dissimilarity of the graphic parts, it is very difficult to obtain the support of the examiner.
However, we argued that the subject trademark is a combination mark of graphic and words, and the graphic part is also recognized by consumers as an important part of the word part "troom troom". In addition, the overall design of the applied trademark is very unique, the ingenious combination of words and graphics gives consumers a more profound impression. Moreover, generally the consumers are more likely to recognize the word part, thus the subject trademark can be distinguished from the cited marks in overall appearance. In addition, the graphic-word trademarks and pure graphic trademarks are easily to be distinguished in distinctive part, pronunciation and meaning. Therefore, the CNIPA finally supported our arguments and approved the extension of protection of the trademark in China for most of the goods/services.
Therefore, for the discussion of the dissimilarity between the graphic-word trademark and the pure graphic trademark, we can focus on the combination of the graphic and word in the combined trademark, the overall design of the combined trademark, and generally the consumers are more likely to recognize the word part, then argue the dissimilarity between the graphic-word trademark and the pure graphic trademark.
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.