This May, the Beijing IP Court released a judgment on trademark invalidation administrative dispute related to "SIENXMZ", which was a free-riding registration upon "SIEMENS", the leading electronic engineering company from Germany.
The disputed trademark was applied for registration in Class 7 and 11 on August 3, 2015. The trademark later got approved on "agricultural machine; electric food-making machine; washing machine" and so on in class 7 and "air adjustment equipment; freezing equipment and apparatus; water heat supply equipment" and so on in Class 11.
Regarding these two registrations, Siemens filed invalidation request before the (TRAB) based on the similarity between them and the registered trademarks "SIEMENS" of its own, which had obtained high fame among the relevant market. The TRAB supported the request and invalidated the disputed trademarks.
The proprietor of "SIENXMZ" was dissatisfied with the decision of invalidation and brought lawsuit before the Beijing IP Court for appeal. After examination, the court affirmed the similarity between the disputed trademark and citations from Siemens in terms of pronunciation, words composition and overall appearance, etc. The disputed trademark was remained invalidated by the court.
Regarding the result of invalidating the free ride registration, both the TRAB and Beijing IP Court properly cited regulations related to trademark similarity. According to article 30 of the Trademark Law, where the trademark for registration is identical with or similar to another party's trademark which has been registered or preliminarily approved for use on identical or similar goods, the Trademark Office shall reject the application and shall not publish the trademark. If the trademark had been registered, an interested party might petition the Trademark Office for declaration of invalidation of the registered trademark within five years based on the article 45. As for the confirmation in the law regarding the similar trademark, the court should concern on the aspect of the font style, pronunciation, meaning of the words, the composition and color of the pictures, the overall structure of all the elements combined and so on, so as to affirm that the relevant general public may be confused about the origin of the commodity or believe that there are exist certain connections between the different origins.
In addition to the similarity, the fame of prior existed trademark also plays an essential part in the examination. To decide whether a trademark is proximate to another trademark, a court shall consider the distinctiveness and popularity of the other trademark, the relevancy between goods using these trademarks, etc. to evaluate the likelihood of confusion. In the above case, SIEMEN argued the similarity by proving the fame of its trademark as well as products among the Chinese market, which was supported by the court finally.
To sum up, the affirmation on the similarity of trademarks comes from various aspects. The intrinsic similarity is affected by pronunciation, meaning, the overall style of trademarks and so on, while the fame of cited trademark is also important, even broadens the scope of trademark protection. Under the framework of law, the Chinese Court always take a comprehensive account when determining trademark similarity and build up an equitable environment of trademark protection