Abstract

We, Kangxin Partners, P.C., filed an opposition action against the trademark,       (No. 44569284 in Class 5) (“the opposed mark”) on behalf of LANXESS DEUTSCHLAND GMBH (“Client”) on October 14, 2020.  The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to reject the opposed mark for registration.

Background

LANXESS DEUTSCHLAND GMBH is the famous special chemical products manufacturer, it is also the owner of the brand “朗盛 (LANXESS in Chinese characters).” After years development, the client has become the leading company in the field of special chemical products, and the mark “朗盛” also enjoys high reputation among the relevant public. The client also owns registered trademark “朗盛” in China. The client was of the opinion that the opposed mark is a “similar mark over similar goods” with their mark“朗盛” under registration No.34775009, and that the opposed mark is a copy and imitation and translation of the client’s registered well-known trademark “朗盛” under registration No.4051564 and trademark “LANXESS” under registration No.3949914.  Upon communication with client, we were entrusted to file opposition against this trademark.

The comparison of the marks is as below:

Key Issues

We filed opposition action against the opposed mark on October 14, 2020.  In the opposition, we mainly argued that:

1)        The opposed mark is “similar marks over similar goods” with compared to Cited Mark 1, in violation of Article 30 of the PRC Trademark Law;

2)       The opposed mark is an imitation and translation of the registered well-known Cited Mark 2 and Cited Mark 3, it will mislead the public and damages the client’s interest;

3)        The registration of the opposed mark is deceptive, it will mislead the consumers on the quality, origin of the goods;

4)        Registration of the opposed mark is in improper means, which violates the principle of good faith.  

On August 11, 2021, the CNIPA issued the decision: The partial goods of the opposed mark are similar to the goods of the cited mark; the opposed mark entirely contains the cited mark, and it did not form other meaning that  different from the meaning of the cited mark.  Thus, coexistence of the marks over similar goods may cause confusion that there is certain relation between the opposed mark and the cited mark.  Exception of the opposed mark, the opposed party applied for more than 60 trademark applications; amongst these applications, some of them are similar to the registered mark of famous companies in the field of medicines and chemical products, and some of them were raised oppositions by other parties.  The office holds that the opposed party has the intention of copying or imitating other parties’ marks, and such behavior disturbs the normal order of trademark registration and management, which violates the principle of good faith.  Therefore, the opposed mark should not be approved for registration.

Key Point of the Case

The key issue of this case is that 1）the opposed mark is a “similar mark” with the cited mark, 2) the goods of the opposed mark are similar to those of the designated goods, and 3) the opposed mark was filed in improper means, violates the principle of good faith . 

With respect to issue 1, there are certain differences between the opposed mark and the cited mark in respect of overall appearance and pronunciation, because the opposed mark also contains the characters “锐控” in addition to the characters “朗盛 (LANXESS in Chinese characters)”.  However, the attorney emphasized in the pleading that the cited mark was created by the client based on the pronunciation of the client’s Latin mark, “LANXESS,” thus, it bears strong originality and distinctness when used as a trademark. The cited marks enjoy high reputation among the relative public though large, broad and long-term use by the client. In addition, although the opposed mark also contains the characters “锐控”, the existence of the characters did not make the opposed mark obtain a different meaning from the cited marks.  Therefore, the coexistence of the opposed mark and the cited marks over same or similar goods may lead the relevant public to believe that there is connection between the opposed mark and the cited marks.  In addition, the attorney also collected and submitted prior similar precedents to further prove that the marks of both parties are similar.      

With respect to issue 2, there is no doubt that the opposed mark’s goods “Hygienic disinfectant preparation; Disinfectants” are similar to the goods “Disinfectants” Of cited mark 1.  The rest goods of the opposed mark are not similar to those of the cited marks in accordance with the Chinese Classification of Goods and Services, because they are in different subclasses.  However, we agued from the nature and characteristics of the goods, emphasized that the goods are closely related in respect to function, use purpose, manufacturing department, sales channel and target consumers.  We also illustrated that when consumers purchase products, they will purchase goods with good quality; since the client’s mark enjoys high reputation and the goods are excellent, consumer is more likely to purchase the opposed mark’s goods by mistakenly think that there are certain connection with the parties’ marks.  Moreover, an international big company likes the client, it is quite reasonable to have several products lines, so the consumers may easily think that the opposed mark and its goods are one of the client’s brand and products lines, so it is easy for them to confuse the origin of the goods.   Therefore, the opposed mark’s goods should be considered similar to the goods of the cited marks. 

With respect to issue 3, according to the search made by the attorney, the characters “锐控” in the opposed mark are trademark owned by another chemical company, Chemours.  In the meantime, the opposed party not only imitated the client’s trademark “朗盛”, but also copied the client’s trademark “LANXESS”, “卫可 (Virkon in Chinese characters)”, etc. as well as other chemical companies’ trademarks, and the number is large.  Moreover, the opposed party, and his associated people and company have already used the counterfeiting “卫可 (Virkon in Chinese characters) products in the market, and have caused confusion among relevant public. Therefore, the aforesaid facts and evidence is sufficient to prove that the opposed mark was filed by the opposed party in improper means, which violates the good faith principle, and disturbs the normal trademark registration and management orders.

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