The Similarity of Foreign Language Trademarks should be Judged Based on the Common Understanding of the Relevant Public in China | Opposition Appeal Case Regarding the Trademark “フマキラー” | Linda Liu & Partners
Judgment Gist
The basic function of a trademark is to enable consumers to identify goods and their source. When the disputed trademark is a foreign language sign, the people’s court shall, based on the common understanding of the relevant public in China, examine and determine whether the foreign language trademark has distinctive features. Similarly, when judging the similarity of a foreign language trademark, the standard should also be based on the common understanding of the relevant public in China.
Case Information
Case Summary
The disputed trademark “フマキラー” No. 8064827 was filed for registration to the Trademark Office by TORU YOSHIJIMA on February 9, 2010, on the designated goods “Information processor (central processing unit); Materials for electricity mains [wires, cables]; Protection devices for personal use against accidents; Alarms; Battery; Electric socks; Timer; Camera (photography); Electric device for trapping and killing insects; Electric device for the purpose of trapping and killing insects” in class 9.
The cited mark was the trademark “FUMAKILLA” No. 166794 which was filed for registration by a party not involved in the case on March 19, 1981, and then transferred to Xiamen Xiangqiu Daily Chemical Co., Ltd. (hereinafter referred to as “Xiangqiu Chemical Company”). It was approved to be used on the goods “electrical devices for vaporizing pesticides” in Class 9. It was approved for registration on March 1, 1983, and the term of exclusive use will expire on February 28, 2023.
During the publication period of the disputed trademark, Xiangqiu Chemical Company filed an opposition to the Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as the “Trademark Office”). In response to this opposition, the Trademark Office made a decision No. 60282, ruling that the opposition grounds raised by Xiangqiu Chemical Company were untenable, and the disputed trademark was approved for registration. The main reason for this ruling was that the disputed trademark and the trademark “FUMAKILLA” cited by Xiangqiu Chemical Company on similar goods did not constitute similar trademarks on similar goods.
Xiangqiu Chemical Company was not satisfied with the decision and appealed to the Trademark Review and Adjudication Board (hereafter referred to as “TRAB”) within the statutory time limit. The TRAB made the accused decision on January 7, 2014. The accused decision held that the goods “electric device for trapping and killing insects; electric device for the purpose of trapping and killing insects” designated by the disputed trademark are similar to the approved goods “electric devices for vaporizing pesticides” of the cited mark in terms of function, use, sales channels, sales targets, etc., and they belong to similar goods. The table of Japanese syllabary submitted by Xiangqiu Chemical Company showed that the Japanese Roman spelling form of the disputed trademark is the same as that of the cited mark. The coexistence of the disputed trademark and the cited mark on similar goods is likely to cause confusion of the source of goods among the consumers, for which the disputed trademark constitutes a similar trademark to the cited mark on similar goods. The remaining goods designated for use by the disputed trademark and the goods approved for use by the cited mark do not belong to similar goods, thus they do not constitute similar trademarks on similar goods. It was hereby decided that the disputed trademark on the goods “electric device for trapping and killing insects; electric device for the purpose of trapping and killing insects” shall not be approved, but the registration on the other goods shall be approved.
Disputed trademark Cited mark
TORU YOSHIJIMA was dissatisfied with the above-mentioned accused decision and filed a lawsuit with the Beijing First Intermediate People’s Court (hereinafter referred to as the “court of first instance”). The court of first instance held that the designated goods “electric device for trapping and killing insects; electric device for the purpose of trapping and killing insects” of the disputed trademark constitute similar goods to the goods “electric devices for vaporizing pesticides” approved for use by the cited mark since they highly overlap in terms of function and use, sales channel and consumers, which is likely to cause confusion and misunderstanding among the consumers. Although the constituent elements of the disputed trademark and the cited trademark are different, the disputed trademark is in Japanese and the cited trademark is in English, and neither trademark has a specific meaning, but the text itself is actually a translation of two different languages which are associated specifically and uniquely, thus they constitute similar marks. Given the disputed trademark and the cited trademark are used on the identical or similar goods, their coexistence in the market is likely to cause confusion and misunderstanding among the relevant consumers, thus they constitute similar trademarks. The relevant findings of the TRAB were correct and upheld in the first instance judgment.
Accordingly, the court of first instance dismissed the claims of TORU YOSHIJIMA.
TORU YOSHIJIMA was not satisfied and appealed to the Beijing High People’s Court (hereinafter referred to as the “court of second instance”). The court of second instance held basically the same opinion as the court of first instance that in this case, the disputed trademark is the Japanese “フマキラー” and the cited trademark is “FUMAKILLA” in English, although the constituent elements are different, and according to the table of Japanese syllabary in the standard Japanese dictionary published by the People’s Education Publishing House, “ラー” is corresponding to the Roman characters “RA”, the spelling of other parts of the disputed trademark could correspond letter by letter with other letters of the cited mark, so the disputed trademark and the cited mark still have a certain correspondence. Therefore, the disputed trademark and the cited mark constitute similar trademarks under Article 28 of the Trademark Law of 2001 in respect of the above-mentioned identical or similar goods. Accordingly, the court of second instance dismissed the appeal and upheld the judgment of first instance.
TORU YOSHIJIMA was not satisfied and applied to the Supreme People’s Court for a retrial, claiming that the relevant Chinese public of the goods designated by the disputed trademark could not read the Japanese katakana based on their common perception, the disputed trademark is significantly different from the cited trademark itself, which is not likely to cause confusion and misunderstanding among the relevant public when used on the identical or similar goods, thus they should not be determined as similar trademarks. This conclusion was also admitted in a number of related cases.
The Supreme People’s Court held that, according to the grounds for retrial by TORU YOSHIJIMA, the focus of this retrial was whether the disputed trademark and the cited mark constituted identical or similar marks.
According to Article 8 of the Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving the Grant and Affirmation of Trademark Rights, when the disputed trademark is a foreign language sign, the people’s court shall examine and determine whether the foreign language trademark has distinctive characteristics based on the common understanding of the relevant public in China. The inherent meaning of the foreign language in the sign may affect its distinctive characteristics on the designated goods for use, but if the relevant public has a low degree of awareness of the inherent meaning, and if the source of the goods can be identified with the mark, it can be deemed to have distinctive characteristics.
In this case, both the disputed trademark and the cited trademark are foreign language signs, and the judgment of identity or similarity should be based on the common understanding of the relevant public in China. Specifically, the disputed trademark is the Japanese “フマキラー”, and the approved goods for use are “electric device for trapping and killing insects; electric device for the purpose of trapping and killing insects”. The relevant Chinese public of these goods are mostly consumers of this type of goods in daily life. The relevant public of the goods is relatively unfamiliar with the pronunciation, spelling, meaning, etc. of the disputed trademark composed of Japanese katakana, so they have a low degree of awareness, and the probability of their knowing its corresponding Roman characters is also low. Confusion and misunderstanding is not likely to be caused in identifying the source of goods between the disputed trademark and the cited trademark “FUMAKILLA” which is also composed of foreign language but completely different from the disputed mark in overall structure and combination of letters and which also has no inherent meaning. Therefore, the disputed trademark and the cited trademark do not constitute identical or similar.
Accordingly, the Supreme People’s Court held that the grounds for retrial by TORU YOSHIJIMA were tenable, and ordered revocation of the accused decision and the judgments of the first and second instance.
Attorney’s Opinion
This case mainly involved the judgment of similarity between foreign language trademarks. The disputed trademark in this case is composed of Japanese katakana and an oval device, with white characters on a black background. The constituent elements of the two trademarks are completely different and nothing is similar in their impression to the viewers. However, since the Roman characters which indicated the pronunciation of the disputed trademark are similar to the letters of the cited mark, the TRAB and the courts of first and second instances all found that the two trademarks constituted similar marks.
As the representative of the applicant of the disputed trademark, we have persistently applied legal remedies and emphasized the following points throughout the litigation stage.
The basic function of a trademark is to enable the consumers to identify goods and their source. According to the Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving the Grant and Affirmation of Trademark Rights, when the disputed trademark is a foreign language sign, the people’s court shall examine and determine whether the foreign language trademark has distinctive characteristics based on the common understanding of the relevant public in China. Similarly, when judging the similarity of a foreign language trademark, the standard should also be the general attention of the relevant public in China. The so-called relevant public refers to consumers related to certain types of goods or services of the trademarks and other business operators closely related to the marketing of the aforementioned goods or services.
In this case, the designated goods of the disputed trademark, “electric device for trapping and killing insects” and “electric device for the purpose of trapping and killing insects” are electrical devices specially used to attract insects through light or smell and kill them, specifically referring to electric insect repellents, electric insect repellent lamps, electric mosquito rackets, etc. These products are household pest control equipment, which belong to daily necessities, and their relevant public is ordinary consumers on a daily basis, not professionals in specific industries or who need to know Japanese in particular.
In China, Japanese is a minor foreign language, and the average consumer’s awareness of Japanese is extremely low. When they see a trademark in Japanese, consumers cannot spell it out, and they can only memorize it based on the appearance of the trademark. Under such circumstance, according to general cognitive standards, trademarks of Japanese characters are often recognized as devices. Moreover, from the perspective of the way the Trademark Office searches such trademarks, they are searched as “devices”, and according to international practice, there is a special classification of figurative elements for Japanese characters. In other words, when the disputed trademark is actually used on “electric device for trapping and killing insects” and “electric device for the purpose of trapping and killing insects”, it can only be recognized as a device, or at most it is known to be a Japanese kana, and it is impossible for the relevant public to know its specific pronunciation and meaning.
In contrast, English, as the largest foreign language in China, is the most commonly used and learned foreign language, and its popularity is relatively high. The cited trademark is composed entirely of English letters, which will be directly recognized as an English trademark by ordinary consumers in daily life, and can be spelled out to some extent. Therefore, the degree of awareness of the relevant public to the cited trademark is much higher than that of the disputed trademark, and the cited trademark can be clearly identified as English letters. Therefore, the difference in appearance between the two trademarks is obvious, and the relevant public can clearly distinguish the two from their distinctive appearance.
Our above-mentioned claim was finally supported by the Supreme People’s Court in the retrial, so that the disputed trademark was finally registered. The Supreme People’s Court conducted the examination and judgment from the perspective of consumers and relevant business operators of the goods designated for use of a specific trademark, considering that ordinary consumers in China have a low degree of knowledge of the Japanese language, and they will not know the Roman spelling form of the Japanese characters contained in the disputed trademark and will not link the disputed trademark with the cited trademark, thus the use of the disputed trademark will not cause confusion and misunderstanding. The Supreme People’s Court finally determined that the disputed trademark and the cited trademark did not constitute similar trademarks. This case has reference significance for the judgment of similarity of foreign language trademarks.
Link to the Case Judgment:
Retrial:
