Authors: Zhou Yanpeng, Zhang Shuzhen, Wu Junying, You Xinru Date: 14.03.2018
In recent years, there have been frequent cases of trademark disputes involving twins, but there is actually a lot of room for discussion on whether the judgment of the Intellectual Property Bureau of the Ministry of Economic Affairs (hereinafter referred to as the Bureau) is reasonable. In order to avoid the rigid determination of trademark confusion and harm to the brand of enterprises, the competent authority should constantly review whether the judgment standards are appropriate.
When the brand “Shuguo” under the Wangpin Group applied for trademark registration with the Intellectual Property Bureau of the Ministry of Economic Affairs in 2010, it was rejected by the bureau. The reason for rejection was that the registration of the trademark was designated for the use of “hot and cold beverage shops, restaurants” service category. Someone else had already obtained registration for the “8 Fresh Shuguo Fresh Tea and Picture” trademark in 2009, and the examiner believed that both use the word “Shuguo”, which may cause confusion and misidentification among consumers.
In recent years, there have been numerous cases related to trademark examination by the Intellectual Property Office that have been rejected or revoked due to the similarity of trademarks and the registration of designated goods in the same or similar categories, which have been deemed to cause confusion and misidentification among consumers. For example, You’erkang International, which sells infant formula, originally obtained the trademark registration of “You’erkang and Tu” in 2006. However, after being recognized by the Intellectual Property Office as similar to the “HERCON” trademark registered by others in 2004 and designated for similar product categories, the trademark was found to be confusing and misidentified, resulting in its revocation; In addition, the LED lighting manufacturer Edison Optoelectronics applied for and approved the “Edixeon” trademark with the Intellectual Property Office in 2006, which was also recognized by the Intellectual Property Office in 2010 as similar to the “XEON” trademark registered by American company Intel in 2001 and partially identical to the designated product category, causing confusion and misidentification, and was subsequently revoked.
Trademark confusion, misidentification, and rigid forms of judgment harm the normal development of market competition
Trademarks are mainly used to distinguish one’s own goods or services from those of others, enabling consumers to identify goods or services from different sources. Therefore, the Trademark Law stipulates that “if a registered trademark or a previously applied trademark that is identical or similar to the same or similar goods or services of others may cause confusion or misidentification among relevant consumers,” the trademark cannot be registered or revoked. The purpose is to protect consumers from being unable to identify the source due to trademark confusion, and to protect enterprise brand management, and to prevent manufacturers from maliciously counterfeiting, climbing, or hitchhiking.
That is why, in 2004, the Smart Finance Bureau compiled legislation and practices from various countries and issued a clear review standard for the “risk of confusion and misidentification”. When reviewing the requirements of the “risk of confusion and misidentification”, the Smart Finance Bureau should comprehensively consider the following factors, including:
1、 The strength of trademark recognition;
2、 Whether the trademark is similar and the degree of similarity;
3、 Whether the goods/services are similar and to what extent;
4、 The situation where the rights holder engages in diversified operations;
5、 Actual confusion and misidentification;
6、 The level of familiarity of relevant consumers with each trademark;
7、 Whether the applicant for the disputed trademark is in good faith, etc.
However, in recent years, it seems that there have been multiple cases of trademark administrative disputes due to the slight similarity between two trademarks and the overlap of the designated goods or services categories, which may cause confusion and misidentification among consumers. Subsequently, trademark applications have been rejected or revoked, leading to a constant stream of trademark administrative disputes. This fruit violates Article 19 of the Trademark Law, which states that the recognition of similar goods or services is not subject to the classification restrictions of the preceding goods or services.
The determination of whether a trademark poses a risk of confusion or misidentification to consumers should not be limited to formality and rigidity. Instead, a comprehensive and complete consideration should be given to the consumer differentiation, market differentiation, channel differentiation, industrial structure, and supply chain between the trademark applicant and the disputed trademark, in order to properly judge whether the trademark poses a risk of confusion or misidentification to consumers. Otherwise, it will not only fail to protect consumers, but also lead to the enterprise investing existing brand management resources, which will be immediately destroyed due to the trademark being rejected or revoked, and the enterprise’s vitality will be greatly damaged.
Examining trademark confusion and misidentification from a brand perspective
The examination principle based on the “risk of confusion and misidentification” includes observing the trademark design as a whole and isolating it from different times and places. It requires the examiner to put themselves in the consumer’s shoes and judge from the brand’s perspective, which also reflects that the judgment of the “risk of confusion and misidentification” needs to be integrated from the brand’s perspective.
According to the American Marketing Association (AMA), “a brand is a name, term, mark, symbol, or design, or a combination thereof, used to identify a product or service offered by a particular seller or group of sellers and differentiate it from that of competitors.
Trademarks are only one part of brand presentation. The research and development, innovative design, product and service quality, public relations advertising and marketing, and innovative business models invested by enterprises to shape their brand are the cornerstone of establishing consumer recognition and shaping the value of their brand.
Because trademark recognition is the accumulated result of various brand activities of enterprises, when making confusion and misidentification judgments, one should start from the brand perspective. For example, when a trademark design contains unique brand elements, it is not appropriate to simply judge whether the trademark is similar based on whether the words are the same. For example, the aforementioned infant formula brand “Yuerkang”, whose trademark design includes images of infants and mothers, thus possessing unique brand elements, should not be recognized as similar solely based on the one character difference between the “Yuerkang” and “Herkang” trademarks.
If there is a distinguishable brand positioning between two brands, and the actual goods used by the two trademarks have obvious differences in market segmentation, target customer groups, packaging design, price, channel selection, etc., even if the two trademarks are registered for the same or similar product categories, it does not necessarily lead consumers to mistakenly believe that the goods or services come from the same source. For example, the aforementioned trademarks “Shu Guo” and “8 Fresh Shu Guo Fresh Tea and Picture” are both designated for use in hot and cold beverage stores and restaurants. However, the former provides set meal products with service as its core, while the latter is a hand cranked beverage store that only provides takeaway services. The types of products or services, market differentiation, price points, and target customer groups of the two are clearly different, and consumers should not be confused.
As mentioned earlier, the trademarks “Edison” and “XEON” are listed in the designated categories of goods, including integrated circuits, semiconductors, chips, etc. However, “Edison” is used for LED lighting components, while “XEON” is used for processors. Therefore, the structure, appearance, technical content, functions, and uses of the products are obviously different. The upstream and downstream suppliers, sales channels, and target customers of their industries are also completely different. It is not appropriate to identify confusion and misidentification solely based on whether the registered product categories are the same or not.
In order to shape brand value and accurately convey it to target customers, enterprises need to plan and design trademarks, product development, packaging design, channel selection, pricing strategies, advertising and public relations, sales strategies, and marketing activities based on their brand positioning, so that consumers can gradually accumulate unique memories, cognition, and feelings about trademarks and brands, and establish trademark recognition. This is the key to endowing their trademarks and brands with value.
Therefore, when the trademark examination authority rejects, evaluates, or revokes a trademark, it should also consider the differentiation of brand elements, business activities, and industrial attributes, and cannot directly determine the risk of confusion and misidentification based solely on whether the goods and services categories are the same or not. If so, enterprises will be trusted and protected in the process of trademark and brand development, and have greater flexibility. From “creativity” to “innovation”, they can shape unique brand value, which can increase the value of the enterprise and achieve double “creative benefits”.
