We, Kangxin Partners, P.C., filed an invalidation action against the trademark, (No. 13998684 in Class35) (“the disputed mark”) on behalf of Carrefour SA (“Carrefour”) on July 20, 2017. The Trademark Review and Adjudication Board (“TRAB”) examined the case and decided to declare the disputed mark’s registration invalid.
Carrefour SA is the owner of the famous brands ,, and for supermarket. The logo is also an art work created by Carrefour SA. Carrefour found that Wang Xizhong (“the disputed party”), a Chinese individual, registered the mark over the services, “advertisements, sponsorship search, etc.” in Class 35. Carrefour held that the disputed mark is a “similar mark over similar services” compare with their marks and . Registration of the disputed mark will damage their prior trademark rights, and prior copyright over the artwork , and the disputed party filed the disputed mark in bad faith.
The comparison of the marks is as below:
We filed the invalidation action against the disputed mark on July 20, 2017. In the invalidation, we mainly argued that:
1) The disputed mark is “similar” to Cited Marks 1, 2 and 3; the disputed mark’s services are similar or closely related to the cited marks’ services. Therefore, the disputed mark is a “similar mark over similar services,” violating Articles 30 and 31 of China Trademark Law.
2) The disputed mark infringes Carrefour’s prior copyright over the art work , violating Article 32 of China Trademark Law.
3) The cited marks enjoy high reputation amongst consumers all over the world, including the consumers in China. Thus, registration and use of the disputed mark will easily cause confusion and misunderstanding amongst the relevant public. In addition, the high reputation of the cited marks before the filing date of the disputed mark could prove that the disputed party has possible access to the Carrefour’s logo before filing the disputed mark.
4) The disputed mark is deceptive, and will confuse and mislead the relevant public over the quality and source of services, in violation of Article 10.1(7) of China Trademark Law.
5) Registration of the disputed mark violates the principle of good faith describing under Article 7 of the China Trademark Law.
On April 13, 2018, the TRAB issued the decision that the disputed mark’s registration should be declared invalid.
Key Point of the Case
The key issue of this case is that the disputed mark is a “similar mark” with the cited marks. The logo, bears strong creativity, and the disputed mark is similar to Cited Mark 1 and the logo, in Cited Marks 2 and 3 with respect to the design and visual effect. We cited one prior similar precedent to further prove the marks’ similarity. In addition, we collected abundant evidence to prove that the cited marks enjoy high reputation amongst relevant public through long-term and wide-spread use. This main evidence includes the different media reports on the cited marks, the long-term use of the cited marks in China, the broad and large promotion for the cited marks in China, and the protection records of the cited marks issued by the China trademark authorities. Thus, if the disputed mark is approved for registration and coexists with the cited marks over the same or similar services, it will easily cause confusion amongst relevant public.
On April 13, 2018, the TRAB decided to declare the disputed mark’s registration invalid.