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Kangxin Succeeds in Trademark Opposition Review Case
date: 2013-09-18

Background
    Kangxin found in its daily monitoring that the mark "blob.png " with trademark No. 4944932 had been preliminarily approved to be registered and announced to the public by the Trademark Office, and that there was a certain similarity between the mark and the trademark of Kangxin's client. The client decided to entrust Kangxin to represent it to file a trademark opposition after being informed of the situation.

    In the course of filing the application for trademark opposition, the Trademark Office determined that the opposed trademark and the opponent's cited trademark did not constitute similar trademarks, thus approving the application for registration of the opposed trademark. Our client decided to file an application for trademark opposition review after being informed of the ruling of the trademark opposition application. After hearing the case, the Trademark Review and Adjudication Board (TRAB) ruled that the opposed trademark shall not be approved for registration.


Process
    On 11 August 2008, the agent representing the case officially filed a trademark opposition based on the following grounds: 1) the opposed trademark and the cited trademark were similar trademarks on the same commodities; 2) the opposed trademark and the cited trademark would cause confusion amongst average consumers; 3) there was malice on the part of the holder of the opposed trademark; 4) the opposed trademark did not have the distinctiveness to distinguish it from the cited trademark; and 5) the cited trademark "崂山" was recognized as a well-known trademark in 1997.
    On 6 January 2011, the Trademark Office ruled that the opposed trademark was not similar to the cited trademark which had been previously registered on similar commodities, and the opponent lacked evidence to support its argument that the holder of the opposed trademark copied and imitated the cited trademark. Therefore, the Trademark Office ruled that the opposed trademark was approved for registration.
    On 7 January 2011, Kangxin informed the client of the ruling of the trademark opposition application and offered opinions to the client.

    On 20 January 2011, Kangxin filed an application for review of the trademark opposition after communicating with the client. The application for review of the trademark opposition was based on the following grounds: 1) the opposed trademark and the opponent's cited trademark constituted similar trademarks registered for similar commodities; 2) the opponent's "崂山" trademark was a special name of a well-known commodity, and the registration application of the holder of the opposed trademark infringed the opponent's right to its special name of its well-known commodities; 3) the opposed trademark infringed the opponent's prior copyright; 4) there was obvious malice on the part of the holder of the opposed trademark by applying for the registration of the opposed trademark; and 5) the opponent and the opponent's cited trademark enjoyed a relatively high reputation. In addition, the corresponding evidence collected and submitted by Kangxin supported the above arguments.


Results

    On 4 January 2013, the TRAB ruled that part of the grounds on which the review for the trademark opposition was based were untenable, and the opposed trademark shall not be approved for registration.


Comments

    The popularity of the cited trademark was a favourable factor in the determination of whether the opposed trademark was similar to the cited trademark, and the provision of sufficient evidence proving the popularity of the cited trademark and the confusion likely to be caused to the relevant consumers by the coexistence of the two trademarks also played a positive role in the determination of the similarity between the two trademarks. In addition, Kangxin collected evidence of other malicious infringement cases of the holder of the opposed trademark, which proved that the holder of the opposed trademark imitated the Jack Daniel's mark, a well-known foreign whisky brand, in 2006, which was also opposed by the brand owner. Such poor record of the holder of the opposed trademark also influenced the outcome of the case.

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