Kangxin Achieves Settlement in Trademark Opposition Case – Kangxin Intellectual Property Lawyers

Kangxin Achieves Settlement in Trademark Opposition Case

date: 2014-03-24

Background

PROMAT RESEARCH AND TECHNOLOGY CENTRE NV operates from a global perspective as a consultant, manufacturer and supplier of fire protection and high performance insulation materials. PROMAT is the owner of the trademark "Microtherm" in China. Our firm reported to the client about the publication of a trademark "Microtherm" filed by a third party in Class 19. We are of the opinion that the coexistence of the marks may cause confusion among consumers and damage the client's interests. Upon communication with client, we were entrusted to file a trademark opposition.

The comparison of the marks is as below:

Process
    On December 8, 2012, we filed the opposition application against the opposed mark. In the opposition, we mainly argued that: 1) this mark is identical to the client's prior mark as they share identical letters of pronunciation; 2) the designated goods of the marks are closely associated with each other in respect of similar function, raw materials, sales channel and target consumers; and 3) the use of this mark will cause confusion among relevant public.

    On October 12, 2013, the TMO issued the decision: The marks constitute identical marks over similar goods, and the coexistence of the marks will cause confusion. Thus, the opposed mark should be rejected for registration.

Key Features
    The key issue of this case is the judgment of similarity of the goods. According to the Chinese Classification of Goods and Services, the designated goods of the opposed mark and those of the cited mark belong to difference Classes, and thus would be considered different if we were to rigidly follow the Chinese Classification. In the opposition, we emphasized the close association of the goods by analyzing their similar function, characters and target consumers, etc. We also submitted evidence proving use and promotion of the client's mark to argue that the coexistence of the marks will cause confusion among consumers.

Result
On October 12, 2013, the TMO issued the decision and rejected the registration of the opposed mark.

Professional Team