This is an invalidation case, in which the China National Intellectual Property Administration (CNIPA) made a breakthrough in determining whether the goods are similar between Class 22 and 23. It determined the similarity exists between the designated good in Class 23 of the Disputed Mark and the designated good "textile fiber raw materials, etc." in Class 22 of the Cited Mark. While determining the degree of similarity, the CNIPA comprehensively considered many factors, including the awareness of the applicant’s prior trademarks and the relevance of the products.

Given the fact that the applicant, in this case, does not have the prior trademark rights in Class 23, we carefully analysed the case after receiving the instructions to file the invalidation. Then, we strategically emphasized that the high relevance of the designated goods of the two parties' trademarks and the reputation of the applicant's "THINSULATE" brand in the grounds of invalidation. Eventually, we succeeded in persuading the CNIPA to make a favourable invalidation decision.

I. BACKGROUND

The respondent, Suzhou Bo Nuan Yu Han Technology Co., Ltd., maliciously registered the "THINSULATION TECH" trademark, which is confusingly similar to 3M company's "THINSULATE" trademark. The respondent filed the Disputed Mark with the malicious intention of inducing consumers to purchase it by mistake.

On behalf of 3M Company, we filed an invalidation against the Disputed Mark in March 2020. The CNIPA issued an invalidation decision on January 19, 2021, and invalidated the Disputed Mark in class 23. The client is satisfied with the result.

II. DIFFICULTIES

(i) The client does not have prior rights in Class 23, so how to demonstrate the similarity between the goods in Class 22 and 23 is the critical issue;

(ii) How to demonstrate that the Disputed Mark is similar to the Cited Marks is another key point. 

III. STRATEGIES

Due to the disputes and the difficulties, in this case, we made the following strategies:

(i) In three aspects, namely the function and purpose of the products, the distribution channel and place of the products, and the relevant producers and the consumers of the products, we fully demonstrate the relevance and similarity of the goods in Classes 22 and 23. Also, we provide the introduction of the "THINSULATE" brand of the applicant's official website, and further support the arguments with the respondent’s product introduction related to the Disputed Mark.

(ii) We collect evidence of the popularity of the "THINSULATE" brand and submit evidence such as "THINSULATE" product brochures, brand advertisements, winter clothing design guidance, brand promotional materials, media reports, product series introductions, etc. The evidence proves that the applicant's "THINSULATE" trademark, which is used on textiles commodities such as fiber raw materials and textile fibers, has already gained a certain reputation through use. Hence, we achieved cross-class protection in this case.

(iii) While comparing trademarks’ similarity, we refer to the third part of the "Trademark Examination and Trial Standards" , "Examination of Identical and Similar Trademarks". In Article 4.1.10 of Examination of Identical and Similar Trademarks, it regulates that "Foreign language trademarks only differ in Singular and plural, gerund, abbreviation, articles, comparative or superlative, part of speech, etc., but the meaning stays the same and the relevant public is likely to be confused with the source of the goods or services. Then, the marks are judged to be similar trademarks". Meanwhile, we quoted the same part in Article 4.1.12 that stipulates "Trademarks only composed by others’ prior trademarks and directly indicate the quality, main raw materials, functions, uses, weight, quantity, and other features of the goods with other text. If the above-mentioned composition of the text is likely to cause the relevant public confusion of the source of the goods or services, it shall be judged as a similar trademark.”

IV. SIGNIFICANCE

In determining the issue of whether the goods in Class 22 and 23 constitute similar goods, the CNIPA comprehensively considered the relevance of the products and the reputation of the applicant’s prior trademarks, then made a breakthrough in cross-class protection.

The CNIPA determines as below:

"The designated products of the Disputed Mark, namely artificial threads and yarns, and the designated products of the Cited Marks 1&2, namely textile fiber raw materials and textile fibers, are related to a certain extent in terms of consumers, distribution channels, functional purposes and so on. The evidence 2-5 submitted by the applicant include "THINSULATE" product brochures, brand advertisements, winter clothing design guidelines, brand promotional materials, media reports, product series introductions, which can prove that the applicant's "THINSULATE" trademark is used and acquired a certain fame through using the Cited Marks 1&2 on textile fiber raw materials, textile fibers and other products. The situation that Disputed Mark and the Cited Mark 1&2 coexist on the above-mentioned similar goods, makes it easy for the relevant public to associate the Disputed Mark with Cited Mark 1&2, and to believe that the goods of the above-mentioned trademarks originate from the same business entity or the providers of the goods have a specific connection. Eventually, the relevant public will be confused and misunderstood the source of the goods, which means the Disputed Mark cannot realize the trademark function.”

This point provides a new way of thinking for the future preparation of conflict cases, that is, when goods and services do not constitute similar under a legally similar situation, it is essential to demonstrate both  1)the relevance and similarity of commodities from multiple angles in combination with the possibility of actual confusion and 2)the sufficient fame related evidence to achieve cross-class protection.