Applicants usually like to apply for registration of a trademark consisting of the company's logo and name. It is a common occurrence for the National Intellectual Property Administration, PRC (“CNIPA”) to reject the registration of a trademark combined with graphic and word (thereafter refers as "combined trademark") on the basis that it is similar to a prior graphic trademark, word trademark and/or combined trademark.  When faced with such rejection, applicants often question how their trademark, which has a distinctive logo or word component compared to prior trademarks and creates a different visual appearance, could be deemed similar and subsequently rejected.  In this article, the author will further explore the examination of similarity of combined trademarks by the CNIPA.

Conclusion of similarity

The author believes that if the word part of a combined trademark is considered similar to the prior word trademark or the word part of a prior combined trademark, such as only a few letters being different, then the two trademarks are highly similar. It would be difficult to overcome such rejection during the review of refusal stage by only arguing that the two trademarks are not similar. For example, trademarks  will be regarded as similar to the trademarks because their word parts are highly similar.

If the graphic part of the combined trademark is similar to the graphic part of the prior combined trademark, but the word part is different, there is a higher chance of overcoming the rejection in the review of refusal stage by arguing that the trademarks are not similar. For example, trademarks  .

In conclusion, if the graphic part of both trademarks is similar, but the word part is not, and the word part is distinctive, there is a higher chance of success that the CNIPA will support that the trademarks are not similar in the review of refusal stage.

Analysis

The "Guidelines for Trademark Examination" stipulates that the distinctiveness of a trademark is a prerequisite for obtaining trademark registration. The distinctiveness of a trademark refers to the characteristic that a trademark enables to distinguish the source of goods or services amongst relevant public. Specifically, it means that a trademark can enable consumers to recognize and remember it, thereby playing a role in indicating the source of goods or services. In my opinion, there is no doubt that the word part of a trademark has inherent advantages in recognition and spreading, compared to graphic part, it has stronger distinctiveness and is easier to distinguish trademarks.

In addition, the "Guidelines for Trademark Examination" stipulates that if the trademark consists of word part and other elements, and the word part is not distinctive, the trademark as a whole should be considered lacking distinctiveness.  The examples are as follows:

(纳米can be translated as "nanometer" used over the goods, nanometer clothing);

 (满汉全席can be translated as "Manchu Han Imperial Feast" used over the services, restaurant);

The above combination trademarks consist of "distinctive graphic part + word", in which the word part does not acquire distinctiveness. Therefore, even though the graphic part is distinctive, the entire trademark is still considered lacking distinctiveness and is rejected. This also leads to the conclusion we mentioned earlier, that if the graphic parts of the combination trademarks are similar, but the word parts are not similar and highly distinctive, there is a high chance that the CNIPA will determine that the two trademarks are not similar in the review of refusal stage.

Inspiration

After the applicant's combined trademark is rejected, it is necessary to analyze the components of the cited trademarks, and further determine whether it can be overcome by arguing the dissimilarity of the trademarks to let the combined trademark can be successfully registered. In addition, in the event that the graphic trademark is rejected, it is advisable for the applicant to add a unique word element and seeking registration for it.