Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases (2019)
13. Application of Article 16 of the Trademark Law
13.1 Determination of “misleading the public”
If the application for a trademark in dispute is easy for the relevant public to misidentify the true origin of goods using this trademark, this trademark falls under the circumstances provided in Article 16.1 of the Trademark Law.
13.2 “Trademarks containing geographical indications of the goods”
If a trademark in dispute contains the whole of geographical indication or the main identification part of a geographical indication, as of result of which the relevant public easily misidentifies the true origin of the goods using this trademark, it shall constitute one of “trademarks containing geographical indications of the goods”.
13.3 Application subjects
If any group or association established to protect geographical indications or aiming at protecting geographical indications believes that a trademark in dispute violates the provisions of Article 16.1 of the Trademark Law, it can file an application. Any producer or business dealer of the goods using such geographical indications may file an application as an interested party.
13.4 Prior protection principles of the country of origin
If a foreign person claims that an application for registration of the trademark in dispute violates the provisions of Article 16.1 of the Trademark Law and thus this trademark should not be registered or be invalid, then it shall provide the certificate proving that the relevant geographical indication in its name is protected by the laws of its country of origin.
13.5 Confusion
If an application for registration of the original trademark is followed by the collective trademark or the certification trademark containing a geographical indication, then the factors such as the objective existence of this geographical indication or its popularity, distinctiveness and the perception of the relevant public may be comprehensively considered to judge whether the relevant public might well confuse the sources of the goods or services; if an application for registration of the collective trademark or the certification trademark containing a geographical indication is followed by the original trademark, we can, from the perspective of improperly adhering to the popularity of this geographical indication, judge whether the relevant public might well confuse the sources of the goods or services.
13.6 Application of the well-known trademark protection
If a collective trademark or certification trademark containing a geographical indication has been in the well-known state, Article 13.3 of the Trademark Law may apply for purpose of protecting this trademark. If an application for registration of the collective trademark or the certification trademark containing the geographical indication filed by a party concerned pursuant to Article 13.3 of the Trademark Law is not approved or is declared invalid, then the factors such as the objective existence of this geographical indication or its popularity, distinctiveness and the perception of the relevant public may be comprehensively considered to determine whether the registration of the collective trademark or the certification trademark containing the geographical indication misleads the public and would harm the interests of the registrant of the ordinary trademark.
13.7 Geographical indication registered as ordinary trademarks
If the applicant or registrant of a trademark in dispute applies for registration of the whole of a geographical indication or its main identification part as a trademark other than the collective trademark or the certification trademark, Article 16.1, 10.2 or 11.1 of the Trademark Law may apply when hearing this case.
13.8 Erroneous determination of geographical scope
If the geographical scope indicated by the applicant of a collective trademark or certification trademark containing the geographical indication in the application document is inconsistent with the actual place of origin, Article 16.1 and other clauses of the Trademark Law may apply when hearing this case.
13.9 Application of legal provisions
If a party concerned claims that another person’s application for registration of a certification trademark or collective trademark containing the geographical indication violates the provisions of Article 16.2 of the Trademark Law and therefore this trademark should not be approved or be declared invalid, the contents (“any trademark to be registered which does not comply with the relevant provisions of this Law”) of Article 30 of the Trademark Law shall apply when hearing this case.
14. Application of Article 19.4 of the Trademark Law
14.1 Determination of trademark agents
The subjects filed and engaging in the trademark agency business, and the subjects recorded in the business license and engaging in the trademark agency business, and the subjects not filed but actually engaging in the trademark agency belong to “the trademark agencies” provided in Article 19.4 of the Trademark Law, and the business items recorded in the business license may not be taken as the basis for exceptions to determination of “the trademark agents” in general.
14.2 Determination of trademark agency business
As entrusted by the entrusting party, the agent handles the application for registration of trademarks, trademark review and other trademark matters in the name of the agent, including trademark registration application, change, renewal, transfer, objection, revocation, review and infringement complaint, offer of legal trademark consulting service, acting as the legal trademark consultant and agency of other trademark affairs, all of which belong to the trademark agency business.
14.3 Transfer of the trademarks in dispute not affecting the subject determination
In procedures of trademark review, if a trademark in dispute is transferred from a trademark agent to a non-trademark agent, Article 19.4 of the Trademark Law may apply when hearing such case.
14.4 Scope determination of application for registration of the trademarks in dispute
The “agency service” is limited to the service items in No. 4506 similar group of the Category 45 of the Similar Goods and Services Classification Table. Except for the trademark agency service, the trademark agents apply for registration of the trademarks on other categories of goods and services, these applications shall not be supported.
15. Application of Articles 30 and 31 of the Trademark Law
15.1 Restrictions onextension of trademark registration
After the registration of the prior trademark of the applicant of the trademark in dispute and before application for the trademark in dispute, if another person registers for the identical category of goods or similar goods a trademark which is identical with or similar to the trademark in dispute, is continuously used and has certain popularity , but the applicant of the trademark in dispute is unable to prove that such prior trademark has been used or has certain popularity through use and does not easily create confusion for the public, where the applicant of the trademark in dispute claims that the registration for such trademark shall be approved, this claim may not be supported.
15.2 Principles of similar trademark judgment
Articles 30 and 31 of the Trademark Law may apply by comprehensively considering the factors such as the similar degree of marks of the trademarks and the goods, the distinctiveness and popularity of the reference trademark, the degree of attention of the relevant public and the subjective intention of the applicant of the trademark in dispute, and the interaction between the factors above, and based on whether it is easy to create confusion for the relevant public. If the marks of two trademarks and their designated goods are identical, the above may be directly determined to violate the provisions of Articles 30 and 31 of the Trademark Law, without considering other factors. If the whole of reference trademark or its distinctive identification part is taken as a component of the trademark in dispute, these trademarks may be determined to have similar marks.
15.3 Similar trademark judgment in administrative cases of review of the rejected trademark application
In an administrative case of review of the rejected trademark application, the similar degree between marks of the trademark in dispute and the reference trademark and other factors are mainly taken the basis for determining whether the trademark in dispute is similar to the reference trademark. The market popularity of the trademark in dispute may not be considered.
15.4 Similar trademark judgment in the administrative cases of review of the unapproved trademark registration and request for invalidation
In an administrative case of review of the unapproved trademark registration and request for invalidation, if the applicant for the trademark in dispute is not malicious subjectively, and the trademark in dispute and the reference trademark are coexisted for a long time based on specific historical reasons, and a party concerned claims that the relevant public do not confuse two trademarks, then these trademarks may be determined to be dissimilar with each other. The factors such as the evidence provided by the applicant of the trademark in dispute and the owner of the reference trademark and the subjective state of the registrant of the application for the trademark in dispute may be comprehensively considered to determine whether the trademark in dispute is similar to the reference trademark.
15.5 Market research reports
A party concerned may submit the market research reports to prove that both the trademark in dispute and the reference trademark are dissimilar with each other, but these reports lacking the truthfulness and science basis may not be accepted.
15.6 Conditions for application of Articles 30 and 31 of the Trademark Law
In an administrative case of trademarks, the date of application for the trademark in dispute should be taken as the basis for determining that the registration of reference trademark has been approved, preliminarily validated or applied earlier. If the date of application for the reference trademark is earlier than the trademark in dispute, but the registration of reference trademark has not been approved or preliminarily validated prior to the date of application for the trademark in dispute, even though the registration of reference trademark has been approved or preliminarily validated when TRAD makes a disputed ruling, then Article 31 of the Trademark Law shall apply when determining whether both the trademark in dispute and the reference trademark are similar with each other.
15.7 Cancellation of owners of reference trademarks
In an administrative case of trademarks, if the owner of a reference trademark is canceled and there is no any evidence to prove that a successive subject exists, this trademark may be determined to be dissimilar to others.
15.8 Judgment of similarity between Chinese and foreign trademarks
The similarity between Chinese and foreign trademarks can be judged by comprehensively taking into account the following factors: (1) the degree of cognition of the foreign language meaning by the relevant public; (2) the relevance or correspondence such as meanings, pronunciation and so on between Chinese and foreign trademarks; (3) the distinctiveness, popularity and methods of use of the reference trademark; (4) the actual use conditions of the trademark in dispute.
15.9 Comparison of three-dimensional trademarks
When judging the similarity of a three-dimensional trademark, this judgment generally compare the three-dimensional trademark as a whole, rather than only comparing words and pictures in such trademark with those in the earlier registered trademark.
15.10 Attributes of coexistence agreements
When judging whether the trademark in dispute is similar with the reference trademark, the coexistence agreements may be used as prima facie evidence to exclude confusion.
15.11 Formal prerequisites of coexistence agreements
The owner of the reference trademark shall agree with application for registration of the trademark in dispute inwritten, and expressly states the specific information of the trademark in dispute, but the co-existence agreements with conditions or periods shall not be accepted in general. The coexistence agreements shall be true, legal and valid, and not harm the interests of the state, the public and the third party, otherwise they shall not be accepted.
15.12 Legal effects of coexistence agreements
If the marks of the reference trademark and the trademark in dispute are identical or substantially identical with each other, and used on the identical category of goods or similar goods, coexistence agreements shall not be only taken as the basis for approving the application for registration of the trademark in dispute. If the marks of the reference trademark and the trademark in dispute are similar with each other and used on the identical category of goods or similar goods, and the owner of the reference trademark issues a coexistence agreement, in the event that there is no any other evidence to prove that the coexistence of two trademarks above is sufficient to make the relevant public confusing the sources of goods, then these two trademarks may be determined to be dissimilar with each other. If after issuing a coexistence agreement, the owner of the reference trademark raises an objection on unapproved registration or request for invalidation on the ground that the trademark in dispute is similar to the reference trademark, then this objection or request shall not be supported, unless such coexistence agreement is invalid or canceled.
15.13 Determination of similar goods
In an administrative case of review of rejected application for trademarks, the Similar Goods and Services Classification Table at the time of hearing this case shall be generally taken as the basis for judging whether to constitute similar goods or services. In an administrative case of review of unapproved trademark registration and request for validation of trademark rights, the Similar Goods and Services Classification Table at the time of hearing this case may be taken as the reference for judging whether to constitute similar goods or services.
15.14 Determination of subjective malice
When judging whether the applicant of the trademark in dispute has the subjective malice, the following factors shall be taken into account: (1) the reference trademark has distinctiveness and popularity;
(2) the business place of the applicant of the trademark in dispute is adjacent to that of the owner of the reference trademark; (3) the applicant of the trademark in dispute and the owner of the reference trademark belong to the same industry; and; (4) the mark of the trademark in dispute is substantially identical with that of the reference trademark and the applicant of the trademark in dispute does not give reasonable explanations.
photo from: Beijing High People's Court
