Priority Date as the Important Role from the Opposition Case
When conducting the trademark monitor, we are surprised that a trademark which is same (almost identical) with the prior registered mark over the similar goods is published on the trademark Gazette for opposition. The owner of the prior registered trademark may ask "why the official did not bar the application of the detected mark by citing my prior same (almost identical) trademark over the same designated goods?" We will help you to clarify this question by reviewing an old case.
Our part, acting on behalf of the client, filed trademark opposition against the trademark No. 12366576 for "DOPE" (as the opposed mark). After examination, the CNIPA hold that the opposed mark shall not be approved for registration.
Axcez Trading AB is the owner of trademark “”. The client was of the opinion that the coexistence of their earlier mark and the published mark "DOPE" may cause confusion among consumers and damage the client’s interests. Upon communication with client, we were entrusted to file opposition against the published trademark.
The comparison of the marks is as below:
Brief of Process of the Case:
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 CNIPA issued the decision to support our claim and held that the opposed mark shall not be approved for registration.
Key Point of the Case:
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 CNIPA, 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, CNIPA ignored the priority date of Cited Mark (Madrid designated to China) and preliminary approved the registration of the opposed mark during the examination. This negligence caused that two same marks approved on the same or similar goods. Accordingly, the opponent grasped the CNIPA’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.The use of the two marks will cause confusion among the relevant public of the origin of the goods.
On February 27, 2016 the CNIPA issued the decision and rejected the registration of the opposed mark.
At present, the examiner may not ignore the existence of the priority date of the prior similar mark during their work procedure. As the trademark owner, we should always remember the priority date of the trademark. It will help us confirm the prior trademark right in trademark protection case and shorten the examination period.