Background
    The client, Eu Yan Sang International Ltd is a famous company who supplies and sells Chinese medicine herbs and Chinese patent herbal medicines.  Its main trademark “余仁生” was applied for by Guangzhou Maojinshi Sanjiu Medicine Science and Technology Co., Ltd. in Class 35 under No. 12146836.  The mark was preliminarily published on December 13, 2014. The client entrusted us to file a trademark opposition against it, after we reported the publication.

Process
    After receiving the instructions, the trademark attorney, Ms. Zhang Yiping analyzed the connection between the parties’ marks and their goods / main businesses. According to Chinese Classification of Goods and Services, the designated services in Class 35 of the opposed mark are not similar to the client’s designated goods in Class 5 and services in Class 35; therefore, in the pleading of opposition, the attorney mainly emphasized the high connection between the client’s designated goods and services in Classes 5 and 35 and those of the opposed mark in Class 35, and submitted the client’s use and publicity evidence to prove the high reputation of the client’s trademark and trade name “余仁生” on goods relevant to “medicine,” stressing that the coexistence of both parties’ marks will lead to confusion and misunderstanding amongst the relevant public.

The detailed information of the opposed mark and the cited marks are as follows:

Results

    Ultimately, the CTMO issued the Decision of Rejection of the Trademark No. 12146836 “余仁生”.  The CTMO held that: the client’s trade name and trademark “余仁生” have a certain reputation through years of use and promotion in production and sales in the Chinese market.  The designated services of the opposed mark and those of the cited marks are similar in terms of target consumers, marketing channels, service content and other aspects.  Thus, coexistence of the marks will easily mislead the relevant public about the origin of services, and lead the consumers to think that they are from same entity.  Further, the CTMO reasoned that the opposed mark infringes the client’s trade name right.  According to Article 10.1.(7) and Article 32 of Trademark Law, the opposed mark was rejected for registration. The opposed party made a response within the time limit. 

    The client agreed to publish the case for publicity and discussion on our website and Darts-IP.  The case assured the smooth registration of client’s own trademark Nos. 12308007 and 12308005 for “余仁生 and device” on subclass 3509; it will also be helpful for the client to prevent any third party’s registration for same or similar marks, claiming their prior trade name right or arguing high similarity between the goods or services, despite the Chinese Classification system.

    After receiving the decision of opposition, the client instructed us to submit a batch of invalidation cases with similar situation. As a record of prior protection, the conclusion of this case will be an important basis and reference for subsequent cases; meanwhile, it set a goof example for the client to further fight against the rush-registrations by pharmaceutical enterprises on the same or similar marks in other highly-relevant goods or services.

Comments

Advantage: we focused on the point of the connection of goods/services and supported our case with strong evidence; amd had constant communication with the client during the process.

Aspects to be improved: we did not emphasize Article 10.1.(7) of Trademark Law in the pleading, which is one of the bases of the official decision. This should be something to be considered in later opposition cases.