By the end of
Therefore, the consideration and adoption of trademark co-existence agreements by trademark licensing authorities is of great practical significance to the majority of trademark applicants and trademark agencies.
This article discusses the
Case No.1:
In this case, the disputed trademark was filed by Synlait on
Trademark No. | Trademark | Nice Class | Goods | |
Disputed Trademark | 19088699 | NEW LAITE | 29 | Condensed milk; cream (dairy products); Margarine; Cheese; milk products; Butter; Yoghurt; protein milk; Whey; Dried milk; Sausage; fish-based foods; canned fruit; snacks based on fruits and vegetables; Soup; Egg; Jelly |
Cited Trademark No.1 | 1782199 | LAITE | 29 | canned aquatic products; canned vegetables; canned fruit; canned meat; canned quail eggs; milk drinks (milk-based); milk products; cocoa milk (mainly milk); Yoghurt |
Cited Trademark No.2 | 9676196 | LAITE | 29 | canned fruit; cocoa milk (mainly milk); Milk; milk drinks (milk-based); milk products; canned meat; canned vegetables; canned aquatic products; Yoghurt; canned quail eggs |
The
Firstly, the goods designated by the trademark in dispute in this case constitute the same or similar goods as the goods approved by Cited Trademarks No.1 and 2.
Secondly, the disputed trademark is composed of 'NEWLAITE', and the cited trademarks 1 and 2 are composed of 'LAITE'. The disputed trademarks entirety includes the cited trademarks 1 and 2, which are similar signs. However, they are not identical. Which means there are still differences, and the relevant public has a certain ability to distinguish between similar signs.
Thirdly, the owner of the cited trademarks,
Finally, the court held that both
Taking into account the above factors, the court held that the relevant public would not confuse and misidentify the disputed trademark and the cited trademark. The application for registration of the disputed trademark does not constitute a circumstance under Article 30 of the PRC Trademark Law.
Case No.2:
In this case, the disputed trademark was filed by
Trademark No. | Trademark | Nice Class | Goods | |
Disputed Trademark | 26585561 | ALMAT | 3 | laundry detergent that adsorbs stains; laundry detergents that adsorb pigments; detergent; Washing powder; Textile cleaning agents; Detergent; dish soap; Cleaning preparations |
Cited Trademark | 3117097 | ALMAY | 3 | Shampoo; Hair conditioner; cleaning preparations; Skin cleanser |
The
- The disputed trademark and the cited trademark are composed of five English letters. The disputed trademark is 'ALMAT", and the cited trademark is 'ALMAY'. The first four letters of the two trademarks are identical, only the last letter is different; The disputed trademark is similar to the cited trademark in sound; The two trademarks are both coined words and have no specific meaning. The use of the disputed trademark and the cited trademark on the same or similar goods may lead to confusion among the relevant public as to the source of the goods, or the relevant public may believe that there is a specific connection between the source of the goods of the two trademarks. Therefore, the courts of first and second instance found that the disputed trademark and the cited trademark constituted a similar trademark used on the same or similar goods.
- Considering the similarity of the trademarks and the the goods, the possibility of confusion among the relevant public is high, so the co-existence agreement alone cannot automatically exclude possible market confusion. In a co-existence agreement, the parties may, based on their own commercial interests, express their intention to waive their rights in the registration of others' trademarks. However, this indication does not automatically prove that the subsequent trademark will not cause confusion in the sense of trademark law.
Conclusion
In the above two cases, although the applicants submitted trademark co-existence agreements, the court's examination results were completely different. The author believes that in addition to trademark co-existence agreements, CNIPA also considered more factors to determine whether the disputed trademark and the cited trademark objectively will cause confusion and misidentification among consumers. In Case No.1, the court also examined the commercial relationship between the applicant and the right holder of the cited trademark, as well as the actual circumstances of the applicant's use of the disputed trademark, and determined that the co-existence of the applied trademark and the cited trademarks would not lead to confusion and misidentification. In Case No.2, apart from the trademark co-existence agreement, the applicant did not submit other evidence to exclude the possibility of confusion caused by the co-existence in market of the disputed trademark and the cited trademark. On the basis of considering the similarity of the trademarks the goods, the court found that the possibility of confusion could not be ruled out. As a result, the disputed trademark was ultimately not approved to be registered.
Therefore, although trademark co-existence agreements are important evidence to overcome the obstacles to prior citation of trademarks, they are not sufficient evidence. In fact, although the co-existence agreement coordinates the conflict between the civil rights and interests of specific subjects in relation to trademark registration and the exercise of rights, the trademark system itself also has the function of safeguarding social public order and public interests. The co-existence agreement of trademarks is an important factor in the trademark apply examination, but it still does not relieve the applicant of the burden of proof to prove that the disputed trademark and the cited trademark will not cause confusion among consumers. As to whether or not to accept the co-existence agreement, the trademark authority should still find an optimal balance between respecting the private nature of the trademark and protecting the public interest, depending on the circumstances of specific case.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
MingDun Law Firm
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