The dispute between Volvo Trademark Holdings, Ltd and Shenzhen Zero Distance Communication Technology Co., Ltd., which registered the trademark “” (VOVO), is an insightful case through which we can examine the issue of trademark similarity. Is the coexistence of two marks (Volvo registered two marks - “”、“”) in the market likely to cause the relevant public to confuse the source of the goods or services, and does its fall under the stipulation of Article 30 of the Trademark Law?
Regarding this issue, the State Intellectual Property Office (SIPO), the court of first instance, and the court of second instance arrived at different judgments. That is, the State Intellectual Property Office and the court of second instance considered that the trademarks were similar, and thus could easily confuse the relevant public as to the source of goods or services. The opinion of the court of first instance was the opposite.
It is true that there are many subjective factors in determining whether trademarks are similar or not, but there are also corresponding judgments in previous trials of trademark right confirmation cases. Word marks, as in this case, are usually considered from the three perspectives of the word shape, pronunciation, and meaning. The Trademark Examination and Trial Standards provides the basis for judging whether foreign language trademarks are similar. That is, foreign language trademarks which are composed of four or more letters, with differences only in individual letters, and have no meaning or the meaning is not obvious, the marks shall be deemed similar and likely to confuse the relevant public.
In this case, the letters of the trademark in dispute are composed of VOVO. Compared with Volvo's cited trademark VOLVO, only one letter L is missing. At the same time, the two trademarks have no fixed meaning and cannot be distinguished in meaning. Therefore, it is difficult to distinguish between the disputed trademark and the cited trademark in pronunciation.
However, exceptions are also listed in the Trademark Examination and Trial Standards. If the pronunciation and shape of the initials of the trademark are obviously different, or the overall meaning is different, it thus makes the overall difference of the trademark obvious and unlikely to cause the relevant public to confuse the source of the goods or services shall not be judged as similar trademarks.
Therefore, it is not difficult to understand that in the judgment of the first instance of this case, the judge’s point of view is that the disputed trademark is composed of an artistically designed "". Compared with the cited trademarks one and two, the graphic logos of the two are significantly different in overall visual effects and do not constitute similar logos." Additionally, the courts of first instance and the court of second instance also have different opinions on whether the coexistence of the trademarks of the two parties is likely to cause the relevant public to confuse the source of the goods or services.
Article 10 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in Trial of Trademark Civil Dispute Cases stipulates that in judging whether trademarks are similar, consideration should be given to the distinctiveness and popularity of the registered trademarks. Therefore, in this case, the courts of both instances considered the popularity of Volvo's trademark.
The popularity of Volvo’s trademark on automobiles is self-evident, but the dispute arises because the goods designated for use in the disputed trademark in this case are in Class 9 of "mobile phones, laptops", etc., and it is obvious that Volvo’s trademark in these goods is not used, let alone well-known.
In addition, in terms of the possibility of confusion, the court of first instance, based on the high visibility of Volvo's trademarks on automobiles, held that "on the contrary, it is the popularity of Volvo's trademarks on automobiles, which can better distinguish it from the disputed trademarks used in Class 9".
Of course, this view was relentlessly countered in the second-instance judgment. “On the basis of finding that the “VOLVO” logo is well-known on automobiles and other commodities, the court of first instance believed that the relevant public could distinguish between the disputed trademark and the cited trademark. Obviously contrary to the existing review rules, the second instance corrected it.” The court of second instance based on the judgment of the similarity of the trademarks of both parties, combined with the popularity of Volvo's trademark on automobile products, determined that the registration and use of the trademark in question could easily cause confusion among the relevant public.
As far as this case is concerned, when applying Article 30 of the Trademark Law, the similarity of the trademark itself should be considered first, followed by the reputation of the cited trademark, and the reputation here should consider the reputation of the cited trademark on its designated goods, that is, in this case , It should be considered whether the Volvo trademark is well-known in Class 9 "mobile phones, laptops", rather than its popularity in Class 12 (cars).
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