DEERMA Trademark Dispute Ends In Partial Win For Applicant

Multigoods Production Ltd. (China) filed a trademark application No. 2024734431 for the goods in Class 21 - (see below). In January 2025, the patent office granted registration for part of the goods in Class 21. However, the patent office refused registration in respect of other goods because the designation was confusingly similar to the word designation “DEERMA” in several trademarks earlier registered by Guangdong Deerma Technology Co., Ltd. in respect of the goods in Class 21 (No. 630208 dated November 25, 2016; IR No. 1752318 dated April 28, 2023; IR No. 1715302 dated June 06, 2022; IR No. 1448382 dated November 21, 2018).

The applicant appealed against the refusal. The appeal was based on the applicant’s view that their goods in Class 21 were not similar to those in the cited trademarks. The applicant asked the patent office to register the trademark for home aquariums, portable baby baths, and other household items.

The Chamber of Patent Disputes examined the appeal and noted that protection was sought for goods in Class 21; however, the applied designation was confusingly similar to a series of international trademarks: Nos. 630208, 1752318, 1715302, and 1448382. Protection for those trademarks was granted for the goods in Class 21.

The applied designation and the cited trademarks show that all designations include the same word element “DEERMA”. The designations are also similar from a visual perception perspective. The word “DEERMA” in the cited trademarks predominates in the combined designations; therefore, the inclusion of the figurative element cannot differentiate the cited trademarks from the applied designation in the eyes of the consumer.

As a result, the Chamber of Patent Disputes concluded that, despite certain differences, the compared designations are similar.

Establishing similarity is challenging, and much depends on the appraiser’s individual judgment. To bring greater clarity to the issue of evaluating similarity, the Supreme Court Plenum provided clarification in its 2019 Decree No. 10.

In fact, the Decree concerns all aspects of intellectual property. In Paragraph 162, the Supreme Court explains that it is not permitted to use designations similar to a registered trademark for similar goods if doing so may lead to consumer confusion. To establish infringement, it is sufficient to show the likelihood of confusion, not actual confusion, between the trademark and the disputed designation, from the perspective of an ordinary consumer.

It is important to note that confusion is possible even if the designations are only slightly similar, provided the goods are identical or similar.

The appellant agreed that some goods in Class 21 are similar to the goods bearing the cited trademarks. As a result, the appellant requested registration of the trademark under application No. 2024734431 for certain goods, including inflatable and portable baby baths.

The cited trademarks protect other goods in Class 21, including kitchen utensils, china ornaments, and toothbrushes.

The Chamber of Patent Disputes recognized that the claimed designation is confusingly similar to the cited trademarks in respect of similar goods in Class 21; accordingly, the patent office’s conclusion was correct that the claimed designation did not conform to Article 1483 of the Civil Code.

At the same time, the claimed goods – signboards of porcelain or glass, fiberglass thread, opal glass, enameled glass, and other goods – are not similar and cannot be rated under the same type of goods. So, there can be no confusion on the market. The Chamber of Patent Disputes amended the patent office’s decision, dismissed the appeal, and ordered the registration of the trademark under application No. 2024734431.

This decision shows the Chamber of Patent Disputes’ flexibility in taking well-founded decisions. On the other hand, the applicants are also well advised to pursue their goals with greater tenacity, because patent office decisions are not always the final word and are sometimes corrected by the Chamber of Patent Disputes.

The Trademark Lawyer by CTC Legal Media

Vladimir Biriulin