By Meiqi Deng, Chofn IP
When a trademark is rejected based on relative ground, we are often asked by the applicants whether the fact that the rejected trademark had been used for a long time could help to overcome the rejection in the appeal procedure. For this question, our normal answer is NO, as the appeal department of the China National Intellectual Property Administration (CNIPA) would usually focus on examining the similarities of the rejected trademark and the cited trademark(s) rather than prior reputation of the rejected trademark. That is to say, generally, the prior use and reputation of the rejected trademark could not substantially increase the chance of success. However, in some cases, they are still helpful to some extent. Such answer is given based on Beijing High People's Court's recently published guidelines and also based on our experiences in two recent appeal cases.
Beijing High People's Court's Guidelines:
Beijing High People's Court published Guidelines for the Trial of Trademark Right Granting and Verification Cases in 2019.
Based on Rule 15.3 (see below) of the Guidelines, the similarities of the rejected trademark and the cited trademark(s) are judged from the degree of similarities in the trademarks per se and the reputation of the rejected can be excluded from consideration. The logic of the Court is that in the procedure of an appeal against rejection, the owner of the cited trademark could not participate in the procedure and consequently could not provide evidence or argument. If the evidence regarding the prior use and reputation of the rejected trademark is accepted, there is no chance for the cited mark owner to check and rebut, it might violate the principle of due process of law. Nonetheless, from the wording "may not be considered" of the guidelines, the court does not completely exclude the possibility of taking the evidence of prior reputation into consideration.
Rule 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 rejected trademark and the cited trademark(s) and other factors are mainly taken as the basis for determining whether the rejected trademark is similar to the cited trademark(s). The reputation of the rejected trademark may not be considered.
CNIPA's comments in two recent appeal cases
In two recent appeals against rejection based on relative ground, we received favorable decisions from the CNIPA and the CNIPA commented on the prior reputation of the rejected trademark. Normally, it is very rare for CNIPA to comment about and consider the prior use and reputation of the rejected trademark. A brief of the cases is listed below.
The trademark "
(xiao P you you in Chinese pinyin and also the Chinese equivalent of POCOYO)" in classes 29 and 30 was rejected due to two cited trademarks "
(xiao zhu you you in Chinese pinyin)" "
(xiao ke you you in Chinese pinyin)" which are different from the rejected trademark only in the second character. Our arguments in the appeals mainly include the following aspects:
The rejected trademark and the cited trademarks are not confusingly similar in respect of meaning and overall appearances.
The term "小P优优 (xiao P you you in Chinese pinyin)" is the title of an animated cartoon for children learning English and is also the name of the major character in the cartoon programme. The applicant had invested substantial resources in promotion and running the series and has released four seasons. The cartoon had been broadcasted since 2011 in Mainland China and had accumulated a large amount of audience including children and adults. The target consumers of its trademark application in classes 29 and 30 overlap with the audience of cartoon programme, and the reputation of the title "小P优优 (xiao P you you in Chinese pinyin)" can help the consumers to distinguish it from the cited trademarks. We filed substantial evidence to prove the prior promotion and use.
There are precedents where trademarks in similar situation have been registered and co-exist with each other.
The CNIPA held that the rejected trademark is the name of a cartoon character which was originally created by the applicant and has acquired certain reputation in the relative public through the applicant's promotion and use and can be distinguishable from the cited trademarks, so the co-existence of the trademarks in respect of similar goods would not cause misidentification to the consumers. Therefore, the CNIPA decided to grant the registration for rejected trademark.
Although we could not say that the prior use and reputation of the rejected trademarks is the decisive factor to win the appeals, we believe that such a claim and the substantial amount of evidence showing the prior use and reputation had played a supportive and important role in affecting the examiners' opinion.
Another unique factor in these two cases is that the rejected trademark is not a simple commercial logo but a creative title of a cartoon programme which has been widely broadcasted by various channels, such as CCTV (China Central Television), online media QQ, SOHU Video. The public has easy access to the cartoon programme. Compared with a pure commercial logo which would usually only be used on products, the name of a television programme could be relatively easier to be acknowledged by the public. Such unique characteristic of the trademark "小P优优" might also have contributed to convincing the examiners to recognize the reputation.
Based on the above two cases, we can see that the CNIPA does not necessarily exclude evidence proving prior use and reputation of the rejected trademark. Even if the evidence is not decisive to the appeal, it could, at least to a certain degree, influence the examiners' subjective judgement on the likelihood of confusion.
Conclusion
Based on either CNIPA's decisions or Beijing High People's Court's Guidelines, the prior use evidence, though may not be taken into consideration in most cases, is still helpful in some cases to overcome rejection based on relative ground. If your trademark has substantial use in Chinese market and has some differences from the cited trademark(s), it is advisable to collect evidence for and claim the prior use and reputation of your trademark. Particularly, if your trademark is a unique name and is more than a pure commercial logo, it would be more worthwhile to claim prior reputation and submit substantial use evidence to strengthen your position in the appeal.
