New case where the provision “having other negative influences”in “Trademark Law of PR China” is applicable
April 11, 2005By Bradley Yu with Unitalen Attorneys at Law
It is stipulated in Item 8, Paragraph 1, Article 10 of “Trademark Law of PR China” (hereinafter referred to as “Trademark Law”) that, marks “harmful for the socialist morality or bearing other negative influences” shall not be registered as trademark. But there has been no specific explanation as for what “mark bearing other negative influences” means. In the decision on Trademark Opposition <(2005) Trademark Opposition No. 00366> made by China Trademark Office (hereinafter referred to as “CTO”) on March 23, 2005, the significant content contained in Item 8, Section I of Article 10 under Trademark Law is fully illustrated when citing the said provision in support of the opposition decision.
The background of this case is as follows. Generation 2000 Co., Ltd. (hereinafter referred to as “Opposer”) registered the trademark “G2000” (hereinafter referred to as “Cited mark”), with Reg. No. 623170 on December 20,1992. The cited mark comprises of letter “G” and numbers “2000”, and the designated goods include “garment, shoes, hat, handbag and leather waistband” in Inter. class 25, exclusive from“sock, glove (dressing), scarf, shawl, tie, and dressing belt (for garment), waistband and leather belt (used as adornment)” in the same class. Hangzhou Shangcheng District Lanxing Sportswear Store (hereinafter referred to as “The opposed party”), has also filed the application for the trademark “G2000” (hereinafter referred to as ”opposed mark”, with publication No. 1617424) on February 12, 2000, comprising of the letter “G” and numbers “2000”, the designated goods bearing which include “sock, glove (dressing), scarf, shawl, tie, and dressing belt (for garment), waistband and leather belt (used as adornment)” in Inter.class 25. Since CTO has classified the the designated goods under the cited mark and those under the opposed mark into different subgroups in class 25 as per the official goods/services list in accordance with Nice Agreement, the examiner has always deemed the goods in these two subgroups as dissimilar. In such case, the application for theopposed mark has been approved for publication .
After discovering such a condition, the opposer entrusted Unitalen Attorneys At Law to raise an opposition against trademark application “G2000” No.1617424.
The grounds of the opposition are: the opposer’s brand “G2000” was established in 1985 and originated from “Generation 2000 Limited”, the company name of the opposer in English. From 1987 when the opposer opened the fist branch in Singapore to July 2000, the opposer has opened 300 branches scattered in countries and areas such as China, Hong Kong, Macao, Singapore, Malaysia, South Korea and Thailand, etc. The opposer has registered the trademark “G2000” in many countries and areas, and in China the designated goods in respect of the opposer’s registered trademark include garment, shoes, hat, handbag and leather waistband, and etc. The opposer has also popularized trademark “G2000” on major newspapers and fashion journals and weeklies such as “Beauty” and “Weekend Pictorial”. By dint of long-term use and effortful advertising, the opposer’s trademark has won wide prestige and become a famous trademark. The opposed mark is totally identical with the cited mark, and the production, usage, function, distribution channel, sales location and other aspects of the goods bearding the opposed mark are basically the same with those bearing the cited mark. Under the said circumstance the opposed mark has constituted the identical or similar trademark on similar goods, and led to confusion of the public. The opposed party has registered the opposed mark in bad faith, and conducted unfair competition. The use of the opposed mark will confuse the public, dilute the fame of the cited mark, infringe the former trademark right and the manufacturer’s name, and finally produce negative influence. Based on the above facts and reasons, CTO shall reject the application for registering the opposed mark in accordance with the following three provisions:
1. Section I of Article 9 under the Trademark Law provides that any trademark in respect of which an application for registration is filed shall be so distinctive as to be distinguishable, and shall not conflict with any prior right acquired by another person.
2. Item 8 of Section I of Article 10 under the Trademark Law provides that mark with “other negative influence” shall not be approved for registration.
3. Article 13 of the Trademark Law provides that;
Where a trademark in respect of which the application for registration is filed for use for identical or similar goods is a reproduction, imitation or translation of another person's trademark not registered in China and likely to cause confusion, it shall be rejected for registration and prohibited from use.
Where a trademark in respect of which the application for registration is filed fdr use for non-identical or dissimilar goods is a reproduction, imitation or translation of the well-known mark of another person that has been registered in China, misleads the pub1ic and is likely to create prejudice to the interests of the well-known mark registrant, it shall be rejected for registration and prohibited from use.
The opposed party has the following grounds of plea: The opposed party is a duly-registered enterprise, and the opposed mark is designed on the base of the formerly registered trademark “2000”, the designated goods under which have different functions from those approved for the opposer’s trademark, and are not similar goods. The cited mark is not a well-known mark, and special strengthening the protection should not be enforced on it.
In accordance with the facts and grounds stated by the parties, CTO holds that,
The opposed mark is composed of letter “G” and numbers “2000”, the designated goods include “sock, glove (dressing), scarf, shawl, tie, and dressing belt (for garment), waistband and leather belt (used as adornment)” in class 25, and its registration date is February 12, 2000. The cited mark is also composed of letter “G” and numbers “2000” with Reg.No.623170, the designated goods in respect of which include “garment, shoes, hat” in class 25, and the registration date is December 20, 1992. The English letter and numbers used in the two trademarks, and the combinations are all the same, thus the two parties’ trademarks constitute similar trademarks. Evidences provided by the opposer, including registration list, advertisement and popularization fee list, and advertisements show that the cited mark has been long and extensively used in many countries and areas including the China mainland, that the opposer has made advertisements and popularization, and that the cited mark has enjoyed certain fame on commodities including “garment” and so on. The opposed mark resembles the Objector’s Quoted Trademark quite much, and the goods designated to the opposed mark fall in the same class with the goods designated to the cited mark. The raw materials, function, usage and sales channel and location of those goods in respect of the opposed mark are basically the same, especially that the “glove (dressing), dressing belt (for garment), and leather belt (used as adornment)” among goods designated to the opposed mark are garment adornments, which are closely related to the goods designated to the cited mark, therefore, the registration and use of opposed mark will likely make the consumers mistakenly think that the goods bearing the opposed mark come from the opposer, so that the real origin of the commodities may be confused, leading to mistaken purchase and producing negative influence.
At last, according to the provisions in Item 8 of Section I of Article 10, and Article 32 under “Trademark Law of PR China”, CTO made the decision that the opposer’s opposition ground is tenable, and the trademark “G2000” No. 1617424 shall be refused for registration.
Therefore, from the three applicable provisions of the Trademark Law cited by the opposer, CTO adopted the second, namely the provision of Item 8 of Section I of Article 10 under the Trademark Law stipulating that mark with “other negative influence” shall not be approved for registration. This conclusion is of great significance. Firstly, it maintained CTO’s consistency in judging the similarity of goods, and the conformity to the official goods/services list made in accordance with Nice Agreement; secondly, for trademarks enjoying great fame but are not famous enough to be regarded as well-known trademarks, it has provided a relatively easy and rapid protection program; at last, this case bears profound directive significance for the future trademark examination and approval.
It is stipulated in Item 8, Paragraph 1, Article 10 of “Trademark Law of PR China” (hereinafter referred to as “Trademark Law”) that, marks “harmful for the socialist morality or bearing other negative influences” shall not be registered as trademark. But there has been no specific explanation as for what “mark bearing other negative influences” means. In the decision on Trademark Opposition <(2005) Trademark Opposition No. 00366> made by China Trademark Office (hereinafter referred to as “CTO”) on March 23, 2005, the significant content contained in Item 8, Section I of Article 10 under Trademark Law is fully illustrated when citing the said provision in support of the opposition decision.
The background of this case is as follows. Generation 2000 Co., Ltd. (hereinafter referred to as “Opposer”) registered the trademark “G2000” (hereinafter referred to as “Cited mark”), with Reg. No. 623170 on December 20,1992. The cited mark comprises of letter “G” and numbers “2000”, and the designated goods include “garment, shoes, hat, handbag and leather waistband” in Inter. class 25, exclusive from“sock, glove (dressing), scarf, shawl, tie, and dressing belt (for garment), waistband and leather belt (used as adornment)” in the same class. Hangzhou Shangcheng District Lanxing Sportswear Store (hereinafter referred to as “The opposed party”), has also filed the application for the trademark “G2000” (hereinafter referred to as ”opposed mark”, with publication No. 1617424) on February 12, 2000, comprising of the letter “G” and numbers “2000”, the designated goods bearing which include “sock, glove (dressing), scarf, shawl, tie, and dressing belt (for garment), waistband and leather belt (used as adornment)” in Inter.class 25. Since CTO has classified the the designated goods under the cited mark and those under the opposed mark into different subgroups in class 25 as per the official goods/services list in accordance with Nice Agreement, the examiner has always deemed the goods in these two subgroups as dissimilar. In such case, the application for theopposed mark has been approved for publication .
After discovering such a condition, the opposer entrusted Unitalen Attorneys At Law to raise an opposition against trademark application “G2000” No.1617424.
The grounds of the opposition are: the opposer’s brand “G2000” was established in 1985 and originated from “Generation 2000 Limited”, the company name of the opposer in English. From 1987 when the opposer opened the fist branch in Singapore to July 2000, the opposer has opened 300 branches scattered in countries and areas such as China, Hong Kong, Macao, Singapore, Malaysia, South Korea and Thailand, etc. The opposer has registered the trademark “G2000” in many countries and areas, and in China the designated goods in respect of the opposer’s registered trademark include garment, shoes, hat, handbag and leather waistband, and etc. The opposer has also popularized trademark “G2000” on major newspapers and fashion journals and weeklies such as “Beauty” and “Weekend Pictorial”. By dint of long-term use and effortful advertising, the opposer’s trademark has won wide prestige and become a famous trademark. The opposed mark is totally identical with the cited mark, and the production, usage, function, distribution channel, sales location and other aspects of the goods bearding the opposed mark are basically the same with those bearing the cited mark. Under the said circumstance the opposed mark has constituted the identical or similar trademark on similar goods, and led to confusion of the public. The opposed party has registered the opposed mark in bad faith, and conducted unfair competition. The use of the opposed mark will confuse the public, dilute the fame of the cited mark, infringe the former trademark right and the manufacturer’s name, and finally produce negative influence. Based on the above facts and reasons, CTO shall reject the application for registering the opposed mark in accordance with the following three provisions:
1. Section I of Article 9 under the Trademark Law provides that any trademark in respect of which an application for registration is filed shall be so distinctive as to be distinguishable, and shall not conflict with any prior right acquired by another person.
2. Item 8 of Section I of Article 10 under the Trademark Law provides that mark with “other negative influence” shall not be approved for registration.
3. Article 13 of the Trademark Law provides that;
Where a trademark in respect of which the application for registration is filed for use for identical or similar goods is a reproduction, imitation or translation of another person's trademark not registered in China and likely to cause confusion, it shall be rejected for registration and prohibited from use.
Where a trademark in respect of which the application for registration is filed fdr use for non-identical or dissimilar goods is a reproduction, imitation or translation of the well-known mark of another person that has been registered in China, misleads the pub1ic and is likely to create prejudice to the interests of the well-known mark registrant, it shall be rejected for registration and prohibited from use.
The opposed party has the following grounds of plea: The opposed party is a duly-registered enterprise, and the opposed mark is designed on the base of the formerly registered trademark “2000”, the designated goods under which have different functions from those approved for the opposer’s trademark, and are not similar goods. The cited mark is not a well-known mark, and special strengthening the protection should not be enforced on it.
In accordance with the facts and grounds stated by the parties, CTO holds that,
The opposed mark is composed of letter “G” and numbers “2000”, the designated goods include “sock, glove (dressing), scarf, shawl, tie, and dressing belt (for garment), waistband and leather belt (used as adornment)” in class 25, and its registration date is February 12, 2000. The cited mark is also composed of letter “G” and numbers “2000” with Reg.No.623170, the designated goods in respect of which include “garment, shoes, hat” in class 25, and the registration date is December 20, 1992. The English letter and numbers used in the two trademarks, and the combinations are all the same, thus the two parties’ trademarks constitute similar trademarks. Evidences provided by the opposer, including registration list, advertisement and popularization fee list, and advertisements show that the cited mark has been long and extensively used in many countries and areas including the China mainland, that the opposer has made advertisements and popularization, and that the cited mark has enjoyed certain fame on commodities including “garment” and so on. The opposed mark resembles the Objector’s Quoted Trademark quite much, and the goods designated to the opposed mark fall in the same class with the goods designated to the cited mark. The raw materials, function, usage and sales channel and location of those goods in respect of the opposed mark are basically the same, especially that the “glove (dressing), dressing belt (for garment), and leather belt (used as adornment)” among goods designated to the opposed mark are garment adornments, which are closely related to the goods designated to the cited mark, therefore, the registration and use of opposed mark will likely make the consumers mistakenly think that the goods bearing the opposed mark come from the opposer, so that the real origin of the commodities may be confused, leading to mistaken purchase and producing negative influence.
At last, according to the provisions in Item 8 of Section I of Article 10, and Article 32 under “Trademark Law of PR China”, CTO made the decision that the opposer’s opposition ground is tenable, and the trademark “G2000” No. 1617424 shall be refused for registration.
Therefore, from the three applicable provisions of the Trademark Law cited by the opposer, CTO adopted the second, namely the provision of Item 8 of Section I of Article 10 under the Trademark Law stipulating that mark with “other negative influence” shall not be approved for registration. This conclusion is of great significance. Firstly, it maintained CTO’s consistency in judging the similarity of goods, and the conformity to the official goods/services list made in accordance with Nice Agreement; secondly, for trademarks enjoying great fame but are not famous enough to be regarded as well-known trademarks, it has provided a relatively easy and rapid protection program; at last, this case bears profound directive significance for the future trademark examination and approval.
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