LONGAN LAW FIRMChinese Trademark Law Article 30 is not just about the issue of “likeness”
— Appellant PUMA SE (original plaintiff) vs. Appellee China National Intellectual Property Administration (original defendant), Third Party in the Original Trial Zuo Rujun Trademark Invalidity Declaration Administrative Dispute Case
Article 30 of the Trademark Law stipulates, “For trademark applications, if they do not conform to the relevant provisions of this law or are identical or similar to trademarks already registered or preliminarily approved for identical or similar goods by others, the Trademark Office shall reject the application and not publish it.” This provision is a necessary clause in the trademark refusal notice and is also the most common clause in trademark opposition and invalidation request cases, making it one of the most frequently used clauses in trademark laws and regulations. Literally, this clause mainly addresses the issues of trademark similarity and similarity of goods, commonly referred to as the “likeness” issue.
However, in the context of trademark law, “trademark similarity” is not only a factual issue of “likeness” but also a legal issue that requires consideration of more factors. This is because the ultimate concern of Article 30 is the issue of “confusion,” that is, whether there is a “likelihood of confusion” when different trademarks coexist in registration and use.
Article 15, paragraph 2 of the “Guidelines for the Trial of Administrative Cases Involving Trademark Authorization and Confirmation”, issued by the Beijing High People’s Court, provides rules for judging trademark similarity. When applying Article 30 of the Trademark Law, it is possible to comprehensively consider factors such as the degree of similarity of trademark symbols, the degree of similarity of goods, the distinctiveness and popularity of cited trademarks, the level of attention of the relevant public, and the subjective intent of the applicant of the disputed trademark. The interplay between these factors is used as a standard to determine whether confusion among the relevant public is likely.
In this case, PUMA SE (“PUMA”) initially discovered the disputed trademark when the third party Zuo Rujun’s trademark App. No. 39284081 was preliminarily published. PUMA found this trademark during their trademark watch and decided to file an opposition. At the same time, it was discovered that Zuo Rujun had previously got assigned the disputed trademark, Reg. No. 25220658, and therefore, PUMA simultaneously decided to file an invalidation request for the disputed trademark.
During the review stage of this case, Zuo Rujun defended, claiming that the disputed trademark was legally assigned by him and had been actually used. He submitted evidence materials such as the trademark transfer contract and evidence of the actual use of the trademark on shoe uppers. Both the China National Intellectual Property Administration (CNIPA) and the Beijing Intellectual Property Court concluded that the disputed trademark and PUMA’s cited trademarks did not constitute similarity.
At the same time, PUMA received support from the CNIPA for the objection to Trademark No. 39284081. In subsequent objection reviews and the first instance of administrative litigation, this trademark was also determined not to be approved for registration. Therefore, in the second instance of this case, PUMA submitted the first-instance judgment as new evidence to the High Court. According to the principle of consistency in examination standards, the disputed trademark and each cited trademark “could be” ruled as similar trademarks.
During the second-instance process of this case, PUMA once again emphasized the high level of fame of the cited trademarks, the apparent malice in the application and transfer process of the disputed trademark, and submitted a “list of the number of trademark applications involving the subject of the disputed trademark.” It particularly emphasized that the High Court had recently made it clear in its judgments that “malicious registration of trademarks, whether acquired or actually put into use, does not alter their nature.” In a situation where the cited trademarks have high fame, and there is apparent malice in the initial application and transfer process of the disputed trademark, the disputed trademark and each cited trademark “should be” to be ruled as similar trademarks.
The Beijing High Court, after comprehensive consideration and trial, ruled that the disputed trademark and each cited trademark are graphical trademarks, and both are similar in terms of design style, constituent elements, visual effects, etc. At the same time, according to the evidence submitted by PUMA, such as advertising and promotion, media reports, sales data, annual profit and loss statements, etc., it can be proved that before the application date of the disputed trademark, each cited trademark already had a certain level of fame on goods such as “shoes, etc.” Zuo Rujun, as a competitor in the same industry, should be aware of the relevant situation of these trademarks, but did not fulfill the obligation of reasonable avoidance and still applied for registration of many trademarks, including the disputed trademark, on the same or similar goods. Such behavior can hardly be considered a coincidence. If the disputed trademark and each cited trademark are used on the same or similar goods, it is easy for the relevant public to mistakenly believe that they are a series of trademarks belonging to the same market entity or that there is a specific connection between the trademark holders, leading to a mistaken perception of the origin of the goods.
Therefore, the High Court concluded that the disputed trademark violated Article 30 of the Trademark Law, revoked the judgment of the first instance and the ruling of CNIPA, and made it clear in the final judgment that when handling administrative disputes involving trademark invalidation requests, if other provisions of the law can declare the disputed trademark invalid based on the evidence on file, Article 44, Paragraph 1 of the 2013 Trademark Law is no longer applicable.
From this case example, it can be seen that the application of Article 30 of the Trademark Law is not only about the issue of “likeness” but also involves the consideration of various factors. Once Article 30 is applied, Article 44, Paragraph 1 of the Trademark Law, which concerns trademarks obtained by unfair means, may not be discussed. This also demonstrates that when applying Article 30, due consideration is given to the subjective intent of the applicant of the disputed trademark.
Hopefully, this case example will deepen everyone’s understanding of the application of Article 30 of the Chinese Trademark Law and enable more effective application of this most commonly used legal provision in future cases.