Background

    The trademark       was approved for registration by CTMO after the opposition action.  After the publication of registration, SATA GMBH & CO. KG entrusted us to file a trademark invalidation action against trademark  (hereafter refers to as “the disputed mark”) in class 7 over the goods, “Painting machines; Spray guns for paint / paint spraying machine; Guns (spray -) for paint; Air brushes for applying color; Paint spray gun; Guns (glue -), electric; Pneumatic hand tool; Pneumatic sprigging gun; Cutting blow pipes, gas-operated; Glue guns, electric,” registered by TAIZHOU LUQIAO QIUYE MACHINERY FACTORY (hereafter refers to as “the registrant”).

Process and Key features

Problems

    1. Sample of the mark: the disputed mark  has a certain difference from the cited mark 1 “萨塔” in respect of composed characters; The disputed mark is similar to the cited marks 2 to 5 only in respect of pronunciation, which is hard to be regarded as similar marks.  Given above, the dispute mark was approved for registration by CTMO in the opposition action.

    2. Designated goods

    The designated goods of the disputed mark belong to Subclasses 0742, 0743 and 0747; the five cited marks’ goods cover Subclasses 0706, 0712, 0733, 0743, 0747-0750 and 0752.  The designated goods, such as “Cutting blow pipes, gas-operated” in Subclass  0742 is not considered as similar to designated goods “Spray guns for paint / paint spraying machine” of cited marks.

Key Features

    1. Sample of the mark: when examining the similarity of the marks, we connected the applicant’s English and Chinese trademarks together, which are “SATA” and “萨塔.”  By arguing the unique correspondence relationship between them, we stressed that the disputed mark is similar with the cited marks in respect of pronunciation, and copies the Chinese character “萨” of the cited mark 1, which is sufficient to cause the confusions among the public.

    2. Popularity and the likelihood of confusions:

    The history brief introduction of the applicant; the wide registrations of the cited marks in many countries and regions all over the world; the wide registrations of the cited marks and their series marks in China; the publications that the applicant promotes the cited marks since 2001; the evidence proving the applicant together with the cited marks’ products in the exhibition in 2006 and 2007; the awards received by the applicant, its distributor in China and the cited marks’ products; the reputation has also been recognized in some prior cases.  We further prove the possibility of confusions and misleading by submitting supported evidence.

    3.  Qualification of the opposed party: by checking the qualification of the registrant, we found out that this company has been cancelled, which means that the registrant does not exist, in other words, the registrant is not a legal entity who can own a trademark right.

Result
      The mark “” and the cited marks constitute similar marks over same or similar goods, so it should be invalidated. 

Comments                                                                                                                                  

    1. Break the classification: the goods “Cutting blow pipes, gas-operated” in Subclass 0742 of the dispute mark were considered similar to the goods “Spray guns for paint / paint spraying machine” in Subclass 0747 of cited marks.

    2. Accept the evidence related to the reputation: “taking into consideration that the marks “萨塔”、“SATA” have the originality, the present evidence could prove that the cited marks already have a certain reputation and are connected with the applicant, after long-term promotion and use of the applicant before the filing date of the dispute mark.”

    3. Taking the qualification of the respondent into consideration: the examiner ever communicated with the attorneys.

Significance                                                                                                                                

    1. When the disputed mark is highly similar or the same with the cited marks, we can seek similarities from the functions of the goods, materials, channels of distribution and consumers, which is likely to break the Classification.

    2. Accept the evidence of the applicant’s popularity, including the brief history introduction of the applicant, the registrations of the cited marks in many countries and regions all over the world and the registration of the series marks in China; the publications in the related periodicals in China; the evidence that the applicant, as well as the products under the cited marks presenting in exhibition; the awards won by the applicant, its distributor in China, the products under the cited marks; the prior cases recognized the reputation of the cited marks.  Whether the evidence of reputation is sufficient or not will affect the criterion of judgment to the similarity of goods and services.

    3. We should check the qualification of the other party to confirm its existence before we start other works.

References  

（一）Legal reference：

    Chinese Trademark Law, Article 4:  Any natural person, legal person, or other organization desirous of acquiring the exclusive right to use a trademark for the goods produced, or services and activities offered by it or him shall file an application for the registration of the goods or service mark with the Trademark Office.

    Chinese Trademark Law, Article 7: Any application or usage of a trademark shall abide by principles of good faith.

    Chinese Trademark Law, Article 10. 1 (7): Those in the nature of fraud in advertising that easily confuses the public with the quality or other characteristics or origins of the goods, or the place of origin of the goods;

    Chinese Trademark Law, Article 30: Where a trademark application does not complies with the relevant provisions in this Law or is identical with or similar to a registered trademark used in connection with the same or similar goods, its registration shall be refused by the Trademark Office after examination and the mark shall not be published.

    Chinese Trademark Law, Article 44: Where a trademark registration violates the provisions of Articles 10, 11, and 12 of this Law, or the registration of a trademark was acquired by fraud or any other improper means, the Trademark Office shall invalidate the registration at issue. Any organization or individual may request that the Trademark Review and Adjudication Board make a ruling to invalidate such a registered trademark.

    Chinese Trademark Law, Article 45: Where a trademark registration violates the provisions of Articles 10 Paragraph 2 and Paragraph 3, Article 15, Article 16 Paragraph 1, Article 30, Article 31 or Article 32 of this Law, any holder of prior rights or any interested party may, within five years from the date of registration, request that the Trademark Review and Adjudication Board make a ruling to invalidate the trademark’s registration.

Date of Summary：August 29, 2017