We, Kangxin Partners, P.C., filed an opposition action against the trademark, (No. 43686494 in Class 25) (“the opposed mark”) on behalf of CIRO PAONE S.P.A. (“Client”) on September 30, 2020. The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to reject the opposed mark for registration.
CIRO PAONE S.P.A. is the owner of a world-renowned clothing brand “KITON.” Through long-term promotion and usage, the client and their brand “KITON” enjoy high reputation among relevant public in China. The client registered the trademarks “” and “KITON” in China over different goods. The client was of the opinion that the opposed mark is a “similar mark over similar goods” with their prior registered trademarks. Upon communication with client, we were entrusted to file opposition against this trademark.
The comparison of the marks is as below:
In the opposition, we mainly argued that:
1) The opposed mark and the client's prior trademarks constitute “similar marks over similar goods”, in violation of Article 30 of the PRC Trademark Law;
2) Based on the high reputation of the cited mark, the registration and use of the opposed mark over same or similar goods will easily cause confusion among relevant public.
On October 22, 2021, the CNIPA issued the decision: The opposed mark is similar to the opponent’s cited mark for in respect of letter composition and pronunciation, and the goods of both sides are similar in respect of functions and use purposes. Thus, the marks are "similar marks over similar goods", and coexistence of the marks may cause confusion and misleading to consumers. Therefore, the opposed mark is in violation of Article 30 of Chinese Trademark Law.
Key Point of the Case
The key issue of this case is that
1）the opposed mark is a “similar mark” with the cited mark, and
2) the goods of the opposed mark are similar to those of the opponent’s cited mark.
With respect to issue 1, the opposed mark is highly similar to the cited mark, because the distinctive parts of the marks share almost the same letters “KIT*ON”; although the opposed mark also contains additional word “HOME”, it bears weak distinctiveness when used over the goods in Class 25.
With respect to issue 2, the goods of the opposed mark are all similar to those of the cited mark in accordance with the Chinese Classification of Goods and Services.