In 2002, DongfengYueda Kia Motors Co., Ltd. (hereinafter referred to as "Yueda Kia Company"), a Sino-foreign car manufacturing joint venture between Dongfeng Motor Corporation, Jiangsu Yueda Investment Co., Ltd. and Kia Motors Corporation of South Korea, was officially established. In 2008, Yueda Kia Company tried to apply for the registration of the trademark "DongfengYueda Kia", which was disputed by its shareholder Dongfeng Motor Corp. Beijing First Intermediate People's Court recently handed down a judgment of first instance, ordering the revocation of the decision after a review by the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the "TRAB") which approved the registration of the disputed trademark, requiring the TRAB to make a new decision.

The disputed trademark was the No.6715913 trademark "DongfengYueda Kia", registration of which was applied for by YuedaKia Company in May 2008 and which was designated to be used on the 21st category of goods like glass for vehicle windows (semi-finished product) and domestic glassware.

The reference trademark was the NO.110702 word trademark "Dongfeng", which was approved to be used on the 12th category of car goods.

Dongfeng Motor Corp argued that the disputed trademark and reference trademark constituted similar trademarks used on identical or similar goods and also infringed the prior right of trade name; therefore, registration of the disputed trademark shouldn't be approved.

The TRAB held that the evidence in this case was insufficient to establish that before the application date for registration of the disputed trademark, the reference trademark had constituted a well-known trademark after use. In the meantime, there are relatively big differences between goods like tempered glass for which the use of the disputed trademark was designated and the industry of car goods in which the reference trademark was well-known, so even if the reference trademark constituted a well-known trademark, it would not lead to confusion among consumers. The disputed trademark is similar to the trade name of Dongfeng Motor Corp, but it doesn't constitute identicalness or basic identicalness. Therefore, the TRAB decided to approve the registration of the disputed trademark.

Dongfeng Motor Corp was dissatisfied with the TRAB's decision and filed administrative proceedings with the court.

After the trial, the court determined that the disputed trademark "DongfengYueda Kia" completely incorporated the reference trademark "Dongfeng", which might easily cause the relevant public to believe that there is some kind of connection between the disputed trademark and the reference trademark, so the disputed trademark and the reference trademark constituted similar trademarks. There is a strong relevance between the glass of vehicle windows (semi-finished product) for which the disputed trademark was designated to be used and car goods for which the reference trademark was approved to be used, thus constituting similar goods. Therefore, as far as the goods "glass of vehicle windows (semi-finished product)" is concerned, the disputed trademark and the reference trademark constitute similar trademarks which are used on similar goods.

As a result, the court made the first-instance judgment as described above.

(source: www.cipnews.com.cn)

【Comment and analysis】

Fiona Cui: In this case, the trademark "Dongfeng" had been approved to be registered as early as the 1980s and was designated to be used on the 12th category of goods "car" and determined to be a well-known trademark of China in 1997. The application date of the trademark "DongfengYueda Kia" was in 2008 and the designated goods was the 21st category "glass of vehicle windows (semi-finished product); tempered glass; glass anti-fog cloth; non-electric wax-polishing equipment; porcelain, terra-cotta or glass artwork; domestic glassware (including cup, dish, pot, jar); paper or plastic cup; kitchenware; drinking flask for travellers; brush goods".

Seen from the comparison of the two trademarks, the trademark "DongfengYueda Kia" completely incorporates the prior trademark "Dongfeng" which has a certain reputation. According to the provisions of the Classification Table of Similar Goods and Services, the designated goods of the two marks don't constitute similarity, though, the "glass of vehicle windows (semi-finished product)" is an accessory of cars and there exists strong relevance. With the trademark "Dongfeng" being the prior one having a certain reputation, the co-existence of the two marks in the mark will easily cause confusion among consumers as to the sources of the goods, namely that they may believe that the trademark "DongfengYueda Kia" comes from Dongfeng Motor Corp or is somewhat connected therewith. As a result, the designated goods of the two marks should be deemed similar goods and the two marks also constitute similar trademarks. The trademark "DongfengYueda Kia" shouldn't be approved to be registered due to violation of Article 30 of the Trademark Law (the original Article 28).

Two questions can be derived from this case: 1. Can the application for registration of a trademark by a subsidiary or affiliate which is identical/similar to the trademark of the parent company pass the review of the trademark office? 2. Can the effect of a well-known trademark last forever?

As for the first question, as the basic function of a trademark is to differentiate the source of goods/services, the unity of entities which register the trademark must be maintained. Even if there is a connection between two companies and they have agreed on the title to the trademark, a subsidiary or affiliate can't apply for a trademark which is identical/similar to the composition of the trademark of the parent company; otherwise its application will be rejected by the Trademark Office. If registration is needed, it's advised to file the application in the name of the parent company and then the trademark can be licensed to the subsidiary or affiliate for use. In this case, if YuedaKia Company wants to continue using the trademark "DongfengYueda Kia", it can only consult with Dongfeng Motor Corp and have Dongfeng Motor Corp file the application and then license the trademark to Yueda Kia Company for use.

As for the second question, the determination of a well-known trademark has always been based on the principle of "passive determination, case-by-case validity", that is, no authority may take the initiative to determine a well-known trademark. If the application of other legal provisions is sufficient to protect the legal rights of the right holder, then legal provisions relating to a well-known trademark will no longer be applied. In this case, the application of Article 30 of the Trademark Law (the original Article 28) has been sufficient to protect the exclusive right of Dongfeng Motor Corp to use the trademark, so its request for well-known trademark determination will no longer be reviewed. Meanwhile, the determination of a well-known trademark is only valid in individual cases. When making a judgment, the court will only deal with it in its reasons for the judgment and will not include it in the main body of the judgment. If the determination of a well-known trademark is still required in subsequent cases, evidence should still be submitted according to the standards for determining a well-known trademark unless the protection scope of the trademark for which the determination of well-knownness is requested is basically the same as that of an already well-known trademark and unless the parties concerned have no dispute regarding the well-knownness of such mark.

Kim G. Dai: "Standards for determination of similar goods or services"

The dispute focus of this case is whether there is similarity between goods like "glass of vehicle windows (semi-finished product), domestic glassware" for which the disputed trademark was designated to be used and the "car" goods for which the reference trademark was designated to be used. As the above-mentioned goods are not classified as similar goods by the Classification Table of Similar Goods and Services, the determination of similar goods in this case falls into a grey area. In practice, the similarity determination of goods in this grey area has always been a thorny issue. It seems that the following conclusions can be drawn from the judgment of this case:

First, the International Classification Table of Goods and Services for the Purpose of Registration of Marks and the Classification Table of Similar Goods and Services are references for determining the similarity of goods.

In this case, the court didn't purely base its determination of the similarity of the goods on the Classification Table and the natural attributes of the goods. Instead, it combined the connections of the designated goods. In practice, compared with administrative authorities of trademark, the court is more flexible in determining the similarity of goods. Based on the principle of prohibiting confusion, the court will usually take into comprehensive consideration the functions, purposes, production department, sales channels, consumer groups of the goods and even the closeness in the business field. The International Classification Table of Goods and Services for the Purpose of Registration of Marks and the Classification Table of Similar Goods and Services are just two of references that the court will use.

Second, the determination of the similarity of goods falls into the category of case-by-case determination.

The same as the determination of a well-known trademark, the determination of the similarity of goods is also a factual issue and needs to take factors in multiple aspects into consideration. In practice, factors like the reputation of the reference mark, distribution channels of the goods, the consumption habits of the relevant public, etc. all may affect the determination of similarity. Therefore, there are no universal standards for the determination of the similarity of goods and case-by-case analysis is required. In the process of determination, the analysis should start with the relevant public and combine elements like functions, attributes of the goods, specifics of the transaction and relevant legal provisions. It's worth pointing out that the reputation of the reference mark is an important reference element which affects the determination of the similarity of goods. Both the well-known trademark and the ordinary trademark are registered trademarks, but the protection scope and strength of the former are obviously greater than the latter. The standards for determining the similarity of goods will be relatively relaxed if the reference mark is a well-known one, which is especially obvious in cases handled by authorities of industry and commerce.