Axcez Trading AB is the owner of trademark “
”. The client was 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 opposition against this trademark.
The comparison of the marks is as below:
| The Opposed Mark | The Cited Mark |
Trademark | 
| 
|
App. No./Reg. No. | 12366576 | G1187311 |
App. Date/IR. Date | April 2, 2013 | July 5, 2013 2013年1月25日（PRIORITY DATE） |
Subclass | 2501-2505、2507-2509 | 2501-2505、2507-2510、2512 |
Designated Goods | Clothing; Shirts; Tee-shirts; Vests; Petti trousers; Trousers; Jackets [clothing]; Caps [headwear]; Footwear; Socks; Footwear; Hats | Clothing, footwear, headgear; shirts, hoodies, jersey shirts; vests; sweaters; braces for clothing; collars (clothing); underwear; clothing; sweat absorbent underwear; clothing apparel; outerwear; jackets; (other than for protection against accidents and injuries); headbands (clothing); clothing of imitations of leather; clothing of leather; t-shirts; camisoles; hats; caps; shirts; socks; beach wear; gloves (clothing); gloves (other than for protection against accidents and injuries); sports headgear (other than helmets); pants; jeans; tights; shorts; swimwear; shorts; footwear for use in snowboarding and skiing; sports and leisure shoes and boots; visors. |
Process
We filed opposition application against the opposed mark on September 15, 2014. In the opposition, we mainly argued that:
1. The priority date of the opponent’s Cited Mark is earlier than the filing date of the opposed mark;
2. The opposed mark constitute same mark to the cited mark. The designated goods of the opposed mark are same/similar to those of the cited mark. Therefore the opposed mark and the cited mark constitute similar marks over the similar goods, according to Article 30 of old China Trademark Law, the opposed mark shall not be approved for registration.
On February 27, 2016, the CTMO issued the decision: the opposed mark constitute same mark to the cited mark. The designated goods of the opposed mark are similar to those of the cited mark The coexistence between the two marks will easily cause confusion about the source of goods, and consequently, the opposed mark shall not be approved for registration.
Key Features
The key issue of this case is the confirmation of the priority date of Cited Mark and judgment of similarity of the goods.
In opposition case, the parties, opponent, opposed party as well as CTMO, usually pay more attention to compare the filing dates of the opposed mark and cited mark in China, but ignore the marks’ priority date. Generally, this situation occurs mostly for the Madrid application which designate to China by claiming the prior filing date of the originally national application. For our case, CTMO ignored the priority date of cited mark (Madrid designated to China) and preliminary approved the registration of the opposed mark. This negligence caused that two same marks approved on the same or similar goods. Accordingly, the opponent grasped the CTMO’s defect and got the success of the opposition case.
According to the Chinese Classification of Goods and Services, the designated goods of the opposed mark and cited mark belongs to the same class, thus the designated goods of the opposed mark is similar to those of cited mark. The use of the two marks will cause confusion among the relevant public of the origin of the goods.
