With the increase in the number of trademark applications in China, more and more enterprises will receive a notice of rejection from the Trademark Office during the trademark application process. So, what kind of attitude should a company take when it receives a notice of refusal from the Trademark Office? Is it positive defense (submit a refusal review application) or passive acceptance?
The author does not answer this question, the first trademark examiner rejected the trademark application for reasons based on a simple comb, so that enterprises can not only know what is more know why.
Rejected the application for registration of trademarks, refers to the Trademark Office in its substantive review, according to law, on all goods or services, some goods or services in violation of the Trademark Law prohibited trademarks, or in the same goods or similar goods and has been registered or preliminary examination of trademarks conflicting with the trademarks applied for registration of the act of non-registration.
Thus, the Trademark Office's reasons for refusal can be simply summarized as "absolute reasons for violation of prohibitions" and "relative reasons for conflict with prior trademark rights". Trademark Law, Article 10, Article 11 and Article 28 were detailed provisions. Article 10 of the Trademark Law is a mandatory legal provision, and once the absolute grounds of the prohibition are violated, even if a reexamination is filed, the likelihood of success is very small. Therefore, it is recommended that enterprises should try to avoid the prohibitive provisions in Article 10 of the Trademark Law when designing trademarks. In the unlikely event that a trademark is rejected by the Trademark Office on the basis of this Article, it is not recommended that the enterprise (applicant) submit an application for re-examination unless the enterprise (applicant) is able to provide relevant supporting documents.
But other than the trademark refusal case, are recommended to enterprises (applicants) actively defend, especially in the refusal of the trademark has been put into commercial use, commercial publicity, but also to take a positive attitude, in order to fully safeguard their legitimate rights and interests. The following are based on the "Trademark Law," Article 11 and Article 28 of the refusal of the trademark application how to defend, published the author's humble opinion:
a, based on the "Trademark Law," Article 11 of the refusal of the trademark application for review
While the "Trademark Law," the first paragraph of Article 11 lists the three does not conform to the Trademark Law, but in terms of the nature of these three refusal based on are actually the same: lack of distinctiveness. The distinctiveness of a trademark refers to its ability to distinguish the products/services of a product producer/service provider from other identical or similar products/services. This is the most basic and important feature that a logo should have as a trademark, and it directly determines whether the logo can become a trademark and be protected by the Trademark Law of China.
Because according to the provisions of Article 8 of the Trademark Law: "Any visual sign that can distinguish the goods of a natural person, legal person or other organization from the goods of others, including words, graphics, letters, numbers, three-dimensional symbols and color combinations, as well as combinations of the above elements, can be applied for registration as a trademark."
When a visual sign does not serve the purpose of distinguishing the products/services of different product producers/service providers, the visual sign cannot be applied for registration as a trademark.
The first paragraph of Article 11 of the Trademark Law (1) and (2) is a list of signs that lack distinctiveness, and in general, such signs do not serve the purpose of distinguishing between different products/service providers. For example: "502" on "glue"; "XXL" on "clothing" and so on. Such marking is only the name or model number of the product and cannot serve the purpose of distinguishing between different producers of products. The third is the lack of prominence in addition to the first two listed in addition to the other cases of the collective name. For example, the "good smell" on the "rice", "Hunan embroidery" on the "clothing" and so on.
The distinctiveness of a trademark can be divided into two kinds, namely, "inherent distinctiveness" and "distinctiveness obtained through use". The trademarks cited above are all trademarks that lack "inherent distinctiveness", i.e., the composition of the trademark itself lacks distinctiveness, but if the enterprise has carried out a large amount of continuous advertising and publicity for the trademark, so that the relevant public is able to associate the trademark with the products provided by the enterprise, it is generally considered that the trademark has gained distinctiveness through use, and is able to serve the purpose of distinguishing between products/services of different product producers/service providers. In this case, the trademark can be approved for registration. Successful cases in this regard include "One Card" in the banking industry, "Little Sheep" in the catering service industry and "Yogurt" in the dairy industry. These three trademarks were rejected by the examiners of the Trademark Office on the ground of "lack of distinctiveness", but these three enterprises (applicants) did not give up, and actively filed applications for re-examination, and used a large amount of evidence to prove that these trademarks, after a large amount of continuous advertising and publicity, have already taken on a secondary meaning and have strong references, and that the relevant consumers have closely associated these trademarks with their enterprises. The relevant consumers have already associated these trademarks with their businesses, and thus these trademarks have actually served the purpose of distinguishing the products/services of different product producers/service providers, and thus have the distinctiveness that should be possessed as trademarks.
In summary, once an enterprise's trademark has been rejected by the Trademark Office's Examiner on the basis of this article, if the trademark has been widely used and publicized by the enterprise, the enterprise is required to provide all the evidence of the use of the trademark to prove that the trademark has gained a "secondary meaning" through the enterprise's extensive use of the trademark, i.e., it has distinctive character.
In addition to this, the first paragraph (1) and (2) of this article are "only the common name, graphics, model number of the goods" and "only directly express the quality of the goods, the main raw materials, function, use, weight, quantity and other characteristics of the goods. "In reality, the trademark application is seldom composed of the above elements only, but generally have other elements together, therefore, this is also an aspect of the enterprise in the refusal of re-examination can be reasonably argued.
Second, based on Article 28 of the Trademark Law, the refusal of the trademark review application
Article 28 of the Trademark Law refers to the conflict with the prior trademark right, which mainly refers to the application for registration of trademarks and other people in the same kind of goods or similar goods on the same or similar to the registered trademarks or the preliminary determination of the trademarks are the same or similar. With the increase in the number of trademark applications in China, more and more trademarks are rejected on the basis of this article, so in this case, where should enterprises start their review applications? It is difficult to summarize in one sentence due to the complexity of specific cases. The author will explain through the following two cases:
(1) the trademark in the 41st class of the refusal case
The trademark examiner and the prior registration of the trademark "a dream" and "ONEDREAM" trademark similarity for the reason, will be rejected.
The first impression of many people after seeing the above trademark comparison is that the rejected trademark is not similar to the two prior trademarks.
Why is the trademark rejected by the examiner? This is because in the Trademark Office examination, the combination of words and graphics of the trademark is a separate examination, rather than simply the overall examination. In this case, the examiner found that the English part of the rejected mark "Mr. DREAM" was similar to the two cited marks. Therefore, it was rejected.
In this case, the author believes that: first of all, the meaning of the word part of the rejected trademark "Mr.DREAM" (meaning Mr. Dream) is different from the meaning of the two cited trademarks: "Mr.DREAM" (meaning Mr. Dream) actually DREAM" (meaning Mr. Dream) actually refers to Mr. Dream - a person; while the meaning of the two cited trademarks is "a dream", which refers to the natural phenomenon or thing of dream. Secondly, the rejected trademark as a whole is not similar to the two cited trademarks, and the graphic part of the rejected trademark is so distinctive that the relevant public can distinguish it from the two cited trademarks at a glance, and no confusion will be caused.
Therefore, the examiner of the Trademark Office examines the combination trademark separately during the examination, while after the refusal, when the application for review is filed, the examiner of the Board of Examiners examines the trademark as a whole. Therefore, once a part of the combination trademark of an enterprise is rejected as similar to the prior trademark, the enterprise should file a review from whether the trademark as a whole is similar to the prior trademark.
(2) The refusal of the trademark "WOS" in Class 35
The trademark was refused on the ground of similarity with the prior registered trademark "WDS". According to the experience of China's trademark examination, both trademarks are composed of three letters, the first and the last letters of the first and the last letters of the first and the last letters of the first and the last letters of the first and the last letters of the second. According to the experience of China's trademark examination, two trademarks like this are composed of three English letters, the first and last letters are the same, and only the middle one letter is different, generally will be recognized as similar trademarks.
The actual situation of the applicant in this case is that "WOS" is the abbreviation of its self-designed WebOrderSystem, which is open to members only, and the use of which requires logging into the applicant's official website for subsequent operations. Moreover, the applicant has already commercially used and publicized the trademark, which will bring great loss and trouble to the applicant if it cannot be registered.
Based on the actual use of the trademark in this case, it can be seen that the customers who use the "WOS" system are very familiar with the applicant's regular customers, and they need to register for membership to use it, which is a very rigorous and complex procedure, and under such circumstances, it is difficult to cause confusion among the relevant consumers.
Therefore, although the trademark "WOS" and the trademark "WDS" are similar trademarks only in terms of the composition of the trademarks, due to the difference in the consumer groups of the two trademarks, there will not be any infringement on the interests of the relevant consumers by mistakenly purchasing the trademarks.
To sum up, the author believes that whether the refused trademark and the cited trademark constitute similarity cannot be seen simply from the composition of the words, but also from the designated products/services, the cognitive habits of the relevant public, the characteristics of the industry, and the actual use of the specific circumstances of a comprehensive analysis.
In the real world, the trademark application involves all walks of life, it is easy to appear that the examiner does not know much about the product or industry of the enterprise's application, only from the word composition of the trademark for examination, so that once rejected, it is recommended that the enterprise to actively defend in order to protect their legitimate rights and interests.