Issues on Determination of Trademark Infringement

In the new situations after China’s ac-cession to the WTO, the 24^th Meeting of the Standing Committee of the Ninth National People’s Congress adopted the Decision on Revision of the Trademark Law of the People’s Republic of China on October 27, 200l, coming into force on December 1, 2001.The revision of the Trademark Law was made in accordance with the requirements of the WTO TRIPS Agreement for the protection of intellectual property rights by member countries. The number of Articles of the Trademark Law increased to 64 from 43. 2 Articles were deleted or incorporated, 22 Articles were modified, 23 Articles were added, and l9 Articles were unchanged. So, the revision was a complete modification of the Trademark Law.

In order to implement the revised Trademark Law and address a series of issues on the application of law and specific procedures facing the people’s courts in hearing trademark cases, especially important issues on application of law that had not been interpreted or clarified by the Supreme People’s Court in its past judicial interpretations such as the determination of trademark infringement, the Judicial Committee of the Supreme People’s Court adopted the Interpretation of the Supreme People’s Court of Several Issues concerning Application of Law in Hearing Cases of Civil Disputes over Trademarks (the “Interpretation") on October l2, 2002, published and coming into force on October l6, 2002. The Interpretation consists of 24 Articles, and the relevant provisions of it on how to determine a trademark infringement are the legal basis for hearing cases of civil disputes on trademark infringement.

Pursuant to the provisions of the Trademark Law, the determination of trademark infringement involves defining such basic concepts or facts as the relevant public, trademark similarity and similar goods as well as the principles for the determination of trademark infringement that are adhered to by the people’s courts. These are the issues needing imminent resolution in judicial practice. In respect of the aforesaid Articles 8-12 of the Interpretation have clarified some basic concepts that are longtime used in practice but not expressly provided for.

Ⅰ. Relevant Public

Pursuant to the provisions of the Trademark Law, the determination of trademark identicalness or similarity should be on the basis of average attention of the relevant public, so it is very important to demarcate the scope of relevant public. Article 8 of the Interpretation provides for the "relevant public", i.e. "The relevant public under the Trademark Law shall refer to the relevant consumers of certain goods or services designated by a trademark and traders closely related to the marketing of said goods and services." The relevant public under the Trademark Law includes two parts: (1) relevant consumers of certain goods or services designated by a trademark, i.e. final consumers, and (2) traders closely related to the marketing of goods or services designated by a trademark. Either of the two parts of the public is the relevant public under the Trademark Law, which does not dictate the involvement of both parts of the public. Such a provision of the Interpretation is not only consistent with the actual condition of the goods and service markets of China, but also consistent with the general practice under the international conventions contracted by China.

Ⅱ. Trademark Identicalness and Similarity

Pursuant to the provisions of the Trademark Law, the determination of trademark infringement is closely related to the judgment of identicalness or similarity of trademarks. However, there lack more specific provisions on trademark identicalness or similarity in laws and regulations. Therefore, Article 9 of the Interpretation provides specifically for the identicalness or similarity of trademarks. Pursuant to it, the identicalness of trademarks under Article 52(l) of the Trademark Law should mean that the alleged infringing trademark is not essentially different in visual Perception from the registered trademark of the plaintiff. Namely, the trademarks are identical, if in the judgment of common consumers the compared trademarks are not essentially different from each other in visual perception. Pursuant to the second paragraph of Artic1e 9 of the Interpretation, the similarity of trademarks under hale 52(l) of the Trademark Law should mean that the alleged infringing trademark, by comparison, is s1milar to the plaintiff’s registered trademark in the shape, pronunciation and connotation of words or the composition and color of the device, or in the global composition upon the combination of the various elements, or in the three-dimensional shape or the combination of colors, and is most likely to cause the relevant public to confuse the source of goods or think the source of goods is related, in a particular way, to the plaintiff’s registered trademark.

In Practice, infringements for trademark similarity are more common. The similarity of trademarks means that the components of the compared trademarks are similar. However, the understanding and application of elements that should be examined in trademark comparison in the past was not consistent. This provision has defined these elements, i.e. the shape, pronunciation and connotation of words, the composition and color of the device, the global composition upon the combination of various elements, and the three-dimensional shape or combination of colors. The result of trademark similarity is that the relevant pub1ic tends to confuse the source of goods or think the source of goods is particularly related to registered trademark.

In doing so, the Supreme People’s Court has clarified the two oft-used concepts in judicial Practice for the first time in the form of judicial interpretation, which is also the legal basis for the two situations involving determination of trademark infringement.

Ⅲ. Similar Goods or Services and Similarity of Goods and Services

In trademark infringement cases, whether the involved goods or services are in the same kind or similar is another material fact for the determination of infringement. Generally speaking, it is easy to determine the same kind of goods or services, while more complex to determine similar goods or services. Firstly, the standard for judging similarity should be decided as well as the components of it.

To address this issue, Article l1 of the Interpretation has clarified the similar goods, similar services and similarity of goods and services, facilitating application of law by judges. The first paragraph of it provides that the similar goods under Article 52(1) of the Trademark Law should refer to goods with identical function, use, manufacture sector, sales channel and target consumers or goods that the relevant public generally think are related in a particular way and likely to cause confusion. The second paragraph of it provides that the similar services should refer to services with identical purpose, content, mode or object or services that the relevant public generally think are related in a particular way and likely to cause confusion. The third paragraph of it provides that the similarity of goods and services means that the goods and services are related in a particular way and likely to cause confusion on the part of the re1evant Public.

Pursuant to the above provisions, the elements for judging similar goods include the function, use, manufacture sector, sales channel, target consumers, etc. of goods, and the elements for judging similar services include the purpose, content, mode, object, etc. of services. Meanwhile, if the relevant public thinks the goods or services are particular related and likely to cause confusion, the goods or services are similar goods or services.

In drafting the Interpretation, the competent administrative authorities on trademarks and some experts argued that there was the confusion of goods and services in practice, and the judicial interpretation should also make provisions on it. After investigation, research and demonstration, the Interpretation finally adopted by the Judicial Committee of the Supreme People’s Court includes the provision that the goods and services are similar if the relevant public thinks the goods and services are related in a particular way and likely to cause confusion.

In respect of whether the determination of similar goods in the hearing of trademark infringement cases by judges should be subject to the classification of goods and services as stated in the International Classification of Goods and Services for the Purpose of Trademark Registration and the Classification for the Purpose of Distinguishing Similar Goods and Services and whether the international classification of goods and services should be invoked for the judgment of similar goods or services and infringement, common understanding consistent with the international standards for the judgment of relevant issues has been reached in both practical and theoretical circles of intellectual property rights. Article l2l of the Interpretation has absorbed this understanding and provides that where the People’s Court determines the similarity of goods or services according to the provisions of Article 52(1) of the Trademark Law, the determination should be made on the basis of the average Perception by the relevant public of the goods or services, and the International Classification of Goods and Services for the Purpose of Trademark Registration and the Classification for the Purpose of Distinguishing Similar Goods and Services may serve as references for the determination of similar goods or services. The average perception by the relevant public refers to the general knowledge and trading notions of goods of general consumers on the relevant market without limitation to the natural features of the goods. The determination should be made generally by considering the relevant public’s average perception in an individual case, the specific situations in goods trading as well as the combination of various elements for judging similarity of goods as provided for in the Interpretation. At the same time, the classifications in the International Classification of Goods and Services for the Purpose of Trademark Registration and the Classification for the Purpose of Distinguishing Similar Goods and Services may serve as references.

Usually, the most Principle function of the International Classification of Goods and Services for the Purpose of Trademark Registration and the Classification for the Purpose of Distinguishing Similar Goods and Services is for the classification of registered trademarks and convenience of registration examination and trademark administration, and they have some inconsistencies with regard to the similarity of goods. Therefore, they should not be used as basis, but serve as references for the determination of similarity of goods.

Ⅳ. Principles for Determination and Methods for Comparison

Article 52 of the Trademark Law provides for various infringements of the exclusive right to use a registered trademark, and the paragraph (l) of it provides that using a trademark which is identical with or similar to the registered trademark on the same kind of goods or similar goods without a license from the trademark registrant constitutes an infringement. In this case, the judgment of identicalness or similarity of trademarks is one of the keys to the determination of such infringement. Although Article 10 of the Interpretation has defined the identicalness and

 similarity of trademarks, how the people’s court should determine the identicalness or similarity of trademarks and what principles the people’s court should adhere to in determination remain waiting for clear answers. Generally, the de-termination of trademark identicalness or similarity involves the subjective standards of the determining subject, the specific method for comparing the registered trademark and alleged infringing trademark, etc. The determination of trademark similarity also involves some particular conditions of the registered trademark.

Therefore, Article l0 of the Interpretation provides that the people’ court should determine the identical-ness or similarity of trademarks under Article 52(1) of the Trademark Law in the following principles: (1) determination is made on the basis of average attention of the relevant public; (2) comparison of trademarks should be made both globally and in respect of the main parts thereof, and the comparison should be made in separation of the subject matters of comparison; and (3) account should be taken of the distinctiveness and reputation of the claimed registered trademark in determination of the similarity of trademarks. In the determination of identical-ness or similarity of trademark in light of the above principles, the following points should be noted:

(l) The determination should be made on the basis of average attention of the relevant consumers and traders in the public. One should realize that the basic function of a trademark is to help consumers to distinguish goods or services and their sources in purchasing such goods or services. The identicalness or similarity of trademarks usually takes place on the market, and the effected is mainly the relevant consumers and particular traders. Therefore, when a judge determines the identicalness or similarity of trademarks, the judge should adopt the average attention of the relevant consumers or particular traders as the standard. Such attention is not the attention of relevant experts in this field, because the attention of experts might be so specialized as to result in a too strict standard. On the other hand, such attention is not the attention of a careless consumer other than the average consumer, because the attention of a careless consumer might be so broad as to result in omission of identicalness or similarity of trademarks. Therefore, the ordinary, common or average attention of the two parts of the relevant public should be chosen as the standard. This involves a judgment of the ability of action by the subject, which is called in judicial practice the subjective standard for the determination of trademark identicalness or similarity. In analyzing, determining and adopting the relevant evidence as the basis for conclusion and reaching an inner conviction, judges should insist on the average attention of the relevant public as the standard.

(2) The methods of global, main part and separate comparison of identical similar trademarks should be accurately understood. In line with the tendency of consumers to know a trademark on the market, the global, main part and separate comparison methods are often used in the judicial and law enforcement practice for the determination of identicalness trademarks, and in particular the similarity of trademarks.

The global comparison is also called the comparison by observing the trademark as a whole, meaning that the trademark is observed as a whole, in addition to comparison by extracting the various elements constituting the trademark. A trademark as a mark for distinguishing goods or services stands as whole, and what it leaves on the mind of consumers is the global impression of the trademark other than the single element of the trademark. Therefore, where two trademarks are different in their respective composition elements but as a whole are likely to cause confusion by consumers in visual perception, they should be determined as similar trademarks. Otherwise, where some composition elements of the two trademarks are likely to be identical but as a whole are not likely to cause confusion by consumers in visual perception, they should not be determined as similar trademarks.

The main part comparison is also called the comparison by observing the main part of the trademark, meaning that the main distinguishing part of the trademark is extracted for particular observance and comparison, as a supplement to the global comparison. This comparison method is also a method adopted on the basis of the consumers’ specific perception and impression of the trademark and goods on the market. Generally speaking, the most distinct impression on consumers by a trademark the main part of the trademark i.e. the part that plays a major role in distinguishing the trademark from other trademarks. Where the main parts of two trademarks are identical or similar and likely to cause confusion by consumers, the trademarks may be determined as similar.

The separate comparison is alsocal1ed the comparison by observing the trademark in a separate way, meaning that the registered trademark and alleged infringing trademark are located in different places and observed and compared at different times and not put together for observation and comparison. This is a basic trademark comparison method, and should be adopted in whether global or main part comparison of trademarks. Generally speaking, consumers look for goods they want according to the trademark impression on their mind left by the advertising of certain goods or services, and look for goods and services with a trademark known by them on the market. On the market, goods with different trademarks as usually not placed together at the same for on one counter. In the mind of consumers, under most circumstances, the two compared trademarks are not exist at the same time, and what exists in their mind is a trademark that was seen in the past to be compared with the current trademark.

In determination of trademark infringement afterwards, the adoption of the separate observation and comparison method making use of such a way of thinking of consumers can truly reflect the possibility and extent of confusion caused by the alleged infringing trademark. Putting two trademarks together for comparison is different from the actual purchase and trading by consumers on the market, and might cause a judge to pay more attention to the differences of two trademarks and fail to accurately assess the confusion likely to arise from the actual trading by consumers.

Consequently, the Interpretation requires a judge to determine the identicalness or similarity of trademarks through the integrated adoption of above methods, emphasis of consumers’ feeling about the trademark as a whole, comparison of main parts of trademarks, and separate comparison of the alleged infringing trademark and the registered trademark. In this way, judges can determine trademark infringements more scientifically and accurately to ensure the quality of hearing cases.

(3) In determination of similar trademarks, the distinctiveness and reputation of a registered trademark should be considered. Pursuant to the provision of Article 9 of the Trademark Law, a registered trademark should have distinctive characteristics so as to facilitate identification. The distinctiveness is also called identifiability, meaning that a trademark on goods or packaging thereof or services can cause the attention of average consumers and distinguish the same from other goods or services. The distinctiveness is an essential element of a registered trademark, and is an important aspect of the substantive examination of an application for trademark registration. All registered trademarks should be distinctive. In practice, the extent of distinctiveness is different. Some trademark design is so unique, such as the creation of new words through the combination of characters and letters, and in this situation fit is easy to determine the similarity of an infringing trademark. As to a trademark with weaker distinctiveness, it is harder to determine the similarity of the alleged infringing trademark and the registered trademark.

In addition to distinctiveness, the determination of trademark similarity is also closely related to the reputation of certain trademark. According to the ex-tent of public influence by trademarks, trademarks may be divided into well-known trademarks and non-well-known trademarks. Among well-know trademarks or non-well-known trademarks, the levels and grades of reputations of trademarks also vary. Some offenders for their own benefits often design trademarks similar to the trademarks with good reputations of others or even well-known trademarks, causing the dilution of well-known trademarks of others and damages to the lawful rights and interests of others. Therefore, those trademarks with strong distinctiveness and good reputations tend to be the targets of infringement, and should be provided with more sufficient protection. In the determination of trademark similarity, the distinctiveness and reputation of a trademark should be considered.