Basic Case Information
(I) Basic Information of the Parties and Their Representatives
Appellant: AY Company
Authorized Agents:
- He Wenhua, Lawyer at Guangdong Kingbridge Law Firm
- Chen Wenting, Lawyer at Guangdong Kingbridge Law Firm
Respondent: Certain Intellectual Property Office
(II) Basic Case Information
AY Company strategically decided to expand into the industries of capital investment, financial assessment, and financial services. They applied to the Certain Intellectual Property Office to register the trademark “AY” for related services in Class 36, with the application number “2071××××”. The Trademark Office deemed this trademark to be similar to the registered trademark “Five Star AY” under number 334××××, registered by BS Company for similar services, and rejected AY Company’s application for the “AY” trademark in capital investment, financial assessment, and financial services. AY Company appealed to the Trademark Review and Adjudication Board, which upheld the rejection decision after review. Consequently, AY Company filed an administrative lawsuit with the Certain Intellectual Property Court, which also rejected AY Company’s claim and upheld the decision of the Trademark Review and Adjudication Board. This case has now entered the second instance procedure.
(III) Disputed Focus
The main point of contention is whether the disputed trademark violates Article 30 of the Trademark Law, which states: “The Trademark Office shall reject the application and not publish it if the trademark does not comply with the relevant provisions of this Law or is identical or similar to a trademark that has been registered or preliminarily approved for the same or similar goods by another person.”
II. Opinions of the Parties
Appellant AY Company argues:
The disputed trademark “AY” and the cited trademark No. 334×××× “Five Star AY” do not constitute similar trademarks used on similar services.
- Firstly, overall, the disputed trademark “AY” and the cited trademark “Five Star AY” have significant differences.
- Secondly, AY Company’s trademark No. 194×××× “AY and graphic” has long been a well-known trademark, and trademark No. 623×××× “AY” is a famous trademark in a certain province. Additionally, AY Company is a well-known enterprise in China, and its name “AY” can be directly associated with the appellant, thereby enhancing its ability to distinguish the source of goods or services and further differentiating it from “Five Star AY,” preventing consumer confusion.
The cited trademark “Five Star AY” has been revoked by the Trademark Office for non-use for three years. Although it is currently under a three-year review procedure, the legality and validity of the cited trademark are still pending. The trial of this case should be suspended.
The Respondent, a certain Intellectual Property Office, argues:
The application trademark “AY” is fully included in the cited trademark “Five Star AY”. The trademarks are similar in terms of Chinese characters and pronunciation, constituting similar marks. The simultaneous use of both trademarks on the same or similar services is likely to cause consumer confusion regarding the source of services. Therefore, the disputed trademark and the cited trademark constitute similar trademarks used on the same or similar services, violating Article 30 of the Trademark Law.
III. Trial Results and Reasons
Judgment by the Higher People’s Court of City X:
- The administrative judgment of Administrative Case No. 2018 XXXX issued by the Intellectual Property Court of City X is revoked.
- The decision of the Trademark Review and Adjudication Board of the former State Administration for Industry and Commerce in Case No. [2018] XXXX regarding the “AY” trademark rejection review is revoked.
- The Intellectual Property Office of City X shall make a new decision on the rejection review application filed by AY Company against Trademark No. 2071XXXX.
The Higher People’s Court of City X holds that: According to Article 30 of the Trademark Law, trademark applications that do not meet the relevant provisions of this Law, or that are identical or similar to trademarks already registered or preliminarily approved by others for identical or similar goods, shall be rejected by the Trademark Office and not published. Article 28 of the Supreme People’s Court’s Provisions on Several Issues Concerning the Trial of Administrative Cases Involving Trademark Authorization and Confirmation stipulates that during the trial of administrative cases involving trademark authorization and confirmation, if the reasons for rejection, non-approval of registration, or invalidation of the disputed trademark by the Trademark Review and Adjudication Board no longer exist, the People’s Court may revoke the relevant rulings of the Trademark Review and Adjudication Board based on new facts and order it to make new rulings based on the changed facts. In this case, although the original court and the Trademark Review and Adjudication Board determined that the disputed trademark was similar to the cited trademark used in similar services, during the second-instance litigation, the cited trademark was revoked for all registered services, and its exclusive rights terminated. This fact fundamentally changed whether the disputed trademark should be preliminarily approved, as the prior rights obstacle on the specified review services of the disputed trademark has disappeared. Therefore, this court corrects the conclusions of the decisions under appeal and the original judgment. The Trademark Review and Adjudication Board should make a review decision based on the changed facts.
IV. Experience in Handling the Case
The key factor in whether the disputed trademark can be approved is the legal and valid status of the cited trademark. If the cited trademark is ultimately revoked due to non-use for three years, the disputed trademark can be approved. However, in the first-instance proceedings of this case, although the cited trademark was revoked, BS Company filed for review, and the first-instance court did not consider the disputed trademark could be approved for registration due to the revocation of the cited trademark, nor did it suspend the trial because the status of the cited trademark was pending. This differs somewhat from the procedure in trademark infringement litigation; in trademark infringement litigation, if the right trademark is revoked but not yet published, the court almost issues a ruling to dismiss the complaint. However, in trademark confirmation cases, the court often focuses on the legal status of the cited trademark. Even if the cited trademark is revoked but not yet published, the court still considers it a valid trademark and will not suspend the trial due to the pending status of the cited trademark. In such cases, as a representative lawyer, on one hand, it is necessary to request a suspension of the trial procedurally, and on the other hand, actively communicate with the presiding judge, express demands reasonably, and seek the judge’s understanding. Even if the case is not suspended, efforts should be made to wait for the publication of the revoked status of the cited trademark within the trial deadline to make a judgment as far as possible.
