Attorney-at-Law
Min YAO
Beijing Wei Chixue Law Firm
Min YAO
Beijing Wei Chixue Law Firm
In the trademark application process, many applicants encounter rejection due to the existence of similar prior trademarks. This situation often leads to the question: If a trademark is used without registration, will it infringe on others’ rights? This question cannot be simply answered with a “yes” or “no.” According to Article 57 of the Trademark Law, in cases where the trademarks or goods are not identical (“non-identical” situations), the judgment of infringement hinges on whether there is a “likelihood of confusion.” However, the “likelihood of confusion” cannot be determined solely based on trademark rejection information including the information of the cited marks. Instead, it requires a comprehensive analysis combining legal provisions and the specifics of the case. This article will explore the application logic of “likelihood of confusion” from the perspectives of legal provisions, judicial practice, and case examples, so as to provide practical references for trademark applicants.
I. Legal Provisions: Distinguishing “Identical” and “Non-identical” Situations
The existing Trademark Law of China, in the first two items of Article 57, stipulates the following: (i) Using a trademark identical to a registered trademark on the same type of goods without the permission of the trademark registrant; (ii) Using a trademark similar to a registered trademark on the same type of goods, or using a trademark identical or similar to a registered trademark on similar goods, which is likely to cause confusion.
The above provisions of the Trademark Law clearly distinguish between “identical” and “non-identical” situations in trademark infringement:
1. “Identical” situation: If the accused trademark is identical to the registered trademark and is used on the same type of goods, the law directly presumes infringement without the need to prove the likelihood of confusion.
2. “Non-identical” situation: If there are differences in the trademarks or goods (such as similar trademarks or similar goods), it is necessary to further determine whether there is a likelihood of confusion to decide whether it constitutes infringement.
In the case of an “identical” situation, the fact of infringement is clear, and the risk of infringement is extremely high. Trademark applicants should avoid such situations as much as possible. Trademark applicants should redesign their trademarks to maximize the differences from prior registered trademarks and reduce the risk of infringement.
In the case of a “non-identical” situation, the judgment of trademark infringement is more complex. In judicial practice, most accused infringing acts are not simple “identical” situations. The judgment of the likelihood of confusion becomes the key to determining whether trademark infringement is established in “non-identical” situations. The likelihood of confusion cannot be determined solely based on the information of the two parties’ trademarks and must be analyzed in combination with the specific circumstances of the case. In “non-identical” situations, it is necessary to carefully assess whether there is a likelihood of confusion and then determine whether it constitutes trademark infringement.
II. Factors for Judging the Likelihood of Confusion in Judicial Practice
In long-term judicial practice of trademark infringement in China, whether it is likely to cause confusion is usually comprehensively considered based on factors such as the similarity of the trademarks, the similarity of the goods or services, the distinctiveness and reputation of the registered trademark, and the actual use manner of the trademark, to conclude whether it constitutes infringement.
The Trademark Infringement Judgment Standard, implemented by the China National Intellectual Property Administration since June 15, 2020, comprehensively summarizes the factors for judging the likelihood of confusion in Article 21, as follows:
1. Similarity of the trademarks;
2. Similarity of the goods or services;
3. Distinctiveness and reputation of the registered trademark;
4. Characteristics of the goods or services and the way the trademark is used;
5. Attention paid by and cognitive level of the relevant public;
6. Other relevant factors.
The above six factors for judging the likelihood of confusion specifically include the following:
1. Similarity of Trademarks: The consideration is mainly based on the degree of similarity in terms of word, figurative element, pronunciation, meaning and so on. The higher the similarity, the greater the likelihood of confusion.
2. Similarity of the goods or services: The consideration is mainly based on degree of relevance in terms of function, purpose, production sectors, sales channels, and consumer targets and so on. The higher the relevance, the more likely it is to cause confusion.
3. Distinctiveness and reputation of the registered trademark: Trademarks with strong distinctiveness and high reputation are more easily recognized and remembered by consumers. When others use similar trademarks, the likelihood of confusion is relatively higher.
4. Characteristics of goods or services and the way the trademark is used: The elements including the nature, price, packaging, and use scenarios of the goods, as well as the position, method, and frequency of trademark use, all of which can affect consumers’ judgment of the source of goods.
5. Attention paid by and cognitive level of the relevant public: There are differences in the attention and cognitive abilities to trademarks among different consumer groups, which is also a factor to consider when judging the likelihood of confusion.
6. Other relevant factors: This is a catch-all clause, providing space for special circumstances in individual cases to ensure a comprehensive and fair judgment.
The Trademark Infringement Judgment Standard provides a basis for trademark enforcement departments across China to handle and investigate trademark infringement cases, and its criteria of judgment of likelihood of confusion are consistent with China’s long-term judicial practice. The first five factors mentioned above are the most commonly used factors in judging the likelihood of confusion in trademark infringement cases.
III. Practical Case Analysis
To illustrate the factors and specific application of judging the “likelihood of confusion” in trademark infringement cases in a more intuitive manner, this article selects two types of cases for analysis, in one type where the courts held confusion is likely to be caused and in the other type where the courts held confusion is not likely to be caused.
1. Cases where the courts held confusion is likely to be caused and infringement is established.
Case 1: Valeo (Plaintiff) vs. Zhejiang Yiwu Xinlong Lubricant Co., Ltd., etc. (Defendant), First Instance Case No.: (2019) Zhe 01 Civil First No. 1215
In this case, the plaintiff owns the registered trademarks for “法雷奥” (Nos. 874279, 902723) and “Valeo” (Nos. 4651830, 4651833) in classes 7 and 12. The defendant used the marks “法雷奥” , “Valeo” and “Valeo” on lubricants. The court held that the accused infringing marks were similar to the plaintiff’s registered trademarks. Although the accused infringing goods lubricants were not similar to vehicle engines and automotive parts of the registered trademarks according to the classification of goods, they were both automotive products and essential accessories for the normal use of motor vehicles. They were closely similar in terms of function, purpose, sales channels, and consumer targets and are of relatively strong relevance. Considering the strong distinctiveness and high reputation of the plaintiff's trademarks, as well as the defendant’s series of actions of taking advantage of the plaintiff’s brand (including registering companies with the names “法雷奥” and “Valeo” in Hong Kong and marking the names of Hong Kong companies on product packaging), the court concluded that the use of the accused infringing trademarks was likely to cause confusion, and thus, trademark infringement was established.
Case 2: De Rucci Healthy Sleep Co., Ltd. (Plaintiff) vs. Foshan Xiyue Furniture Co., Ltd. (Defendant), First Instance Case No.: (2023) Zhe 01 Civil First No. 734, Second Instance Case No.: (2024) Zhe Civil Final No. 219
In this case, the plaintiff registered trademarks such as “慕思de RUCCI ” No. 3958940 and “慕思” No. 6947074 on the goods furniture in class 20. The defendant used the mark “慕斯迪尔” on mattresses. The court found that the plaintiff’s registered trademark “慕思” had strong distinctiveness and had gained high reputation through use. The main recognizable part of the accused infringing mark “慕斯” was identical to the first character of the registered trademark and had the same pronunciation. The accused infringing mark “慕斯迪尔” was a simple combination of “慕斯” and “迪尔” without any special meaning or direction to another source, which did not bring additional distinctiveness. The accused infringing goods mattresses were similar to the designated goods of the registered trademarks. The court concluded that the use of the accused infringing trademarks was likely to cause confusion, and thus, trademark infringement was established.
In Case 1, the accused infringing goods lubricants belonged to class 4, which was not similar to the goods in classes 7 and 12 according to the Chinese Classification of Similar Goods and Services (hereafter referred to as “Classification”) used for trademark registration. However, the court comprehensively considered factors such as function, purpose, sales channels, and consumer targets, and concluded that the accused infringing goods and the designated goods of the registered trademarks had strong relevance and were similar goods. In trademark infringement cases, the determination of similar goods is not entirely based on the Classification. The court focuses more on commercial realities and comprehensively judges whether the goods are similar. In Case 2, although there were certain differences between the accused infringing mark and the registered trademarks in terms of composing characters, number of characters, and overall appearance, the court fully considered the distinctiveness and reputation of the registered trademarks and concluded that they were similar trademarks, and it also found that the use of the accused infringing mark was likely to cause confusion. The common point of these two cases is that the involved registered trademarks had high reputation in their respective industries. When the registered trademarks have high reputation, the determination of similar goods may break through the limitations of the Classification, and the determination of similar trademarks will be stricter. The accused infringers’ use of identical or similar trademarks on goods which are of certain relevance to the goods of the registered trademarks is likely to be considered as an attempt to take advantage of the reputation of others’ trademarks, thereby causing consumer confusion. This point should be taken very seriously, and unauthorized trademark users should not take chances.
2. Cases where courts held confusion is unlikely to be caused and infringement is not established.
Case 3: Zhu Yeqing (Plaintiff) vs. Wenzhou Luocheng District Puxiaoshi Dou Shen Snack Shop (Defendant), First Instance Case No.: (2019) Zhe 03 Civil First No. 655, Second Instance Case No.: (2020) Zhe Civil Final No. 401
In this case, the plaintiff was granted exclusive license rights in Wenzhou for the trademarks “三姐妹冷面 & device” No. 14227351 (“三姐妹冷面” means “The Three Sisters’ Cold Noodles”) and “松竹三姐妹” No. 3219143 (“松竹三姐妹” means “The Three Sisters of Song and Zhu”) in class 43. The defendant run a snack shop in Wenzhou and used the sign “陈氏三姐妹” (which means “Chen's Three Sisters”) on its storefront sign as shown in the following picture. The plaintiff filed a trademark infringement lawsuit against the defendant based on its exclusive license rights in Wenzhou. After comprehensively considering various factors, the court concluded that the use of the accused infringing sign would not cause confusion or misrecognition among the relevant public, and the accused behavior did not constitute trademark infringement. The specific reasons are as follows:
(1) The two registered trademarks were not strong in distinctiveness, and their reputation was low. The word “三姐妹” (which means “Three Sisters”) is relatively common in family-operated catering service shop names, and its inherent distinctiveness is weak. Moreover, after being granted the exclusive license rights for the two registered trademarks in Wenzhou, the plaintiff did not actually put them in use.
(2) There was a “府学巷三姐妹” (which means “Fuxue Alley Three Sisters”) breakfast shop in Wenzhou that had been operating for three to four decades and had gained high reputation locally. Although the accused sign “陈氏三姐妹” (which means “Chen’s Three Sisters”) had no direct inheritance relationship with “府学巷三姐妹” (which means “Fuxue Alley Three Sisters”), the eldest sister of “Fuxue Alley Three Sisters” was the mother of the founder of the accused “Chen’s Three Sisters” brand, giving the use of the accused sign a certain historical origin.
(3) Considering the weak distinctiveness and low reputation of the two registered trademarks, the differences in appearance between the accused sign and the registered trademarks, and the lack of subjective intent to take advantage of the registered trademarks by the defendant, it should be concluded that the accused sign was not similar to the registered trademarks and it would not cause confusion or misrecognition among the relevant public.
1. Cases where the courts held confusion is likely to be caused and infringement is established.
Case 1: Valeo (Plaintiff) vs. Zhejiang Yiwu Xinlong Lubricant Co., Ltd., etc. (Defendant), First Instance Case No.: (2019) Zhe 01 Civil First No. 1215
In this case, the plaintiff owns the registered trademarks for “法雷奥” (Nos. 874279, 902723) and “Valeo” (Nos. 4651830, 4651833) in classes 7 and 12. The defendant used the marks “法雷奥” , “Valeo” and “Valeo” on lubricants. The court held that the accused infringing marks were similar to the plaintiff’s registered trademarks. Although the accused infringing goods lubricants were not similar to vehicle engines and automotive parts of the registered trademarks according to the classification of goods, they were both automotive products and essential accessories for the normal use of motor vehicles. They were closely similar in terms of function, purpose, sales channels, and consumer targets and are of relatively strong relevance. Considering the strong distinctiveness and high reputation of the plaintiff's trademarks, as well as the defendant’s series of actions of taking advantage of the plaintiff’s brand (including registering companies with the names “法雷奥” and “Valeo” in Hong Kong and marking the names of Hong Kong companies on product packaging), the court concluded that the use of the accused infringing trademarks was likely to cause confusion, and thus, trademark infringement was established.
Case 2: De Rucci Healthy Sleep Co., Ltd. (Plaintiff) vs. Foshan Xiyue Furniture Co., Ltd. (Defendant), First Instance Case No.: (2023) Zhe 01 Civil First No. 734, Second Instance Case No.: (2024) Zhe Civil Final No. 219
In this case, the plaintiff registered trademarks such as “慕思de RUCCI ” No. 3958940 and “慕思” No. 6947074 on the goods furniture in class 20. The defendant used the mark “慕斯迪尔” on mattresses. The court found that the plaintiff’s registered trademark “慕思” had strong distinctiveness and had gained high reputation through use. The main recognizable part of the accused infringing mark “慕斯” was identical to the first character of the registered trademark and had the same pronunciation. The accused infringing mark “慕斯迪尔” was a simple combination of “慕斯” and “迪尔” without any special meaning or direction to another source, which did not bring additional distinctiveness. The accused infringing goods mattresses were similar to the designated goods of the registered trademarks. The court concluded that the use of the accused infringing trademarks was likely to cause confusion, and thus, trademark infringement was established.
In Case 1, the accused infringing goods lubricants belonged to class 4, which was not similar to the goods in classes 7 and 12 according to the Chinese Classification of Similar Goods and Services (hereafter referred to as “Classification”) used for trademark registration. However, the court comprehensively considered factors such as function, purpose, sales channels, and consumer targets, and concluded that the accused infringing goods and the designated goods of the registered trademarks had strong relevance and were similar goods. In trademark infringement cases, the determination of similar goods is not entirely based on the Classification. The court focuses more on commercial realities and comprehensively judges whether the goods are similar. In Case 2, although there were certain differences between the accused infringing mark and the registered trademarks in terms of composing characters, number of characters, and overall appearance, the court fully considered the distinctiveness and reputation of the registered trademarks and concluded that they were similar trademarks, and it also found that the use of the accused infringing mark was likely to cause confusion. The common point of these two cases is that the involved registered trademarks had high reputation in their respective industries. When the registered trademarks have high reputation, the determination of similar goods may break through the limitations of the Classification, and the determination of similar trademarks will be stricter. The accused infringers’ use of identical or similar trademarks on goods which are of certain relevance to the goods of the registered trademarks is likely to be considered as an attempt to take advantage of the reputation of others’ trademarks, thereby causing consumer confusion. This point should be taken very seriously, and unauthorized trademark users should not take chances.
2. Cases where courts held confusion is unlikely to be caused and infringement is not established.
Case 3: Zhu Yeqing (Plaintiff) vs. Wenzhou Luocheng District Puxiaoshi Dou Shen Snack Shop (Defendant), First Instance Case No.: (2019) Zhe 03 Civil First No. 655, Second Instance Case No.: (2020) Zhe Civil Final No. 401
In this case, the plaintiff was granted exclusive license rights in Wenzhou for the trademarks “三姐妹冷面 & device” No. 14227351 (“三姐妹冷面” means “The Three Sisters’ Cold Noodles”) and “松竹三姐妹” No. 3219143 (“松竹三姐妹” means “The Three Sisters of Song and Zhu”) in class 43. The defendant run a snack shop in Wenzhou and used the sign “陈氏三姐妹” (which means “Chen's Three Sisters”) on its storefront sign as shown in the following picture. The plaintiff filed a trademark infringement lawsuit against the defendant based on its exclusive license rights in Wenzhou. After comprehensively considering various factors, the court concluded that the use of the accused infringing sign would not cause confusion or misrecognition among the relevant public, and the accused behavior did not constitute trademark infringement. The specific reasons are as follows:
(1) The two registered trademarks were not strong in distinctiveness, and their reputation was low. The word “三姐妹” (which means “Three Sisters”) is relatively common in family-operated catering service shop names, and its inherent distinctiveness is weak. Moreover, after being granted the exclusive license rights for the two registered trademarks in Wenzhou, the plaintiff did not actually put them in use.
(2) There was a “府学巷三姐妹” (which means “Fuxue Alley Three Sisters”) breakfast shop in Wenzhou that had been operating for three to four decades and had gained high reputation locally. Although the accused sign “陈氏三姐妹” (which means “Chen’s Three Sisters”) had no direct inheritance relationship with “府学巷三姐妹” (which means “Fuxue Alley Three Sisters”), the eldest sister of “Fuxue Alley Three Sisters” was the mother of the founder of the accused “Chen’s Three Sisters” brand, giving the use of the accused sign a certain historical origin.
(3) Considering the weak distinctiveness and low reputation of the two registered trademarks, the differences in appearance between the accused sign and the registered trademarks, and the lack of subjective intent to take advantage of the registered trademarks by the defendant, it should be concluded that the accused sign was not similar to the registered trademarks and it would not cause confusion or misrecognition among the relevant public.
Actual use manner of the accused infringing sign
Case 4: Beijing Qicai Mingyuan Jewelry Co., Ltd. (Plaintiff) vs. Jiangyin Xingdu E-commerce Co., Ltd., etc. (Defendant), First Instance Case No.: (2022) Su 0281 Civil First No. 5718, Second Instance Case No.: (2022) Su 02 Civil Final 211
In this case, the plaintiff owned the registered trademark right for “OVV” No. 7528367 on the goods such as jewelry and necklaces in class 14. The defendant owned the registered trademark right for “OVV” in class 25, operating mainly women’s clothing under the “OVV” brand, and at the same time operating in small amount of necklaces, rings, and other jewelry as accessories for clothing.
The court found that the accused infringing goods necklaces and rings were the same type of goods as the designated goods of the registered trademark. The accused infringing sign was similar to the registered trademark. However, after comprehensively considering the following factors, the court concluded that the use of the accused infringing sign would not cause confusion or misrecognition among the relevant public, and the accused behavior did not constitute trademark infringement:
(1) There was no sufficient evidence to prove that the registered trademark had strong distinctiveness and public recognition, and it is difficult for the relevant public to confuse the trademark that is weak in distinctiveness and not well-known.
(2) The plaintiff mainly sold high-end jewelry such as jadeite, tourmaline, amber, agate, and pearl jewelry at higher prices. The accused infringing goods, although also jewelry, were mainly made of alloy, sold at lower prices, and were listed in the “accessories” category of the JD.com store, which is more of a purpose for auxiliary clothing matching. Therefore, there were differences in purchasing consumers and use scenarios between the jewelry and jewelry goods sold by the plaintiff and the accused infringing goods.
(3) The accused infringing goods were sold in the defendant’s “OVV Flagship Store” on JD.com. The defendant’s main products were women’s clothing under the “OVV” brand. When consumers entered the “OVV Flagship Store” to browse and purchase related goods, they could clearly know that the accessories came from the defendant and would not mistakenly believe that the goods came from the plaintiff.
Case 5: Shenyang Ai Er Ma Trading Co., Ltd. (Plaintiff) vs. Chongqing Yipet Technology Co., Ltd. (Defendant), First Instance Case No.: (2019) Liao 01 Civil First No. 779, Second Instance Case No.: (2019) Liao Civil Final No. 221
In this case, the plaintiff owned the registered trademark rights for “百利本能” No. 18463413 on the goods such as animal food in class 31. The defendant sold pet food imported from the United States in its “E Pet” online mall. The court found that the accused infringing goods pet food were the same type of goods as the designated goods of the registered trademark. The accused infringing marks had a certain degree of similarity with the plaintiff’s registered trademark. However, after comprehensively considering the following factors, the court concluded that the use of the accused infringing sign would not cause confusion or misrecognition among the relevant public, and the accused behavior did not constitute trademark infringement:
(1) The word “本能” used by the defendant in its publicity was the corresponding Chinese translation of the registered trademark “INSTINCT” in the US, and the infringing product itself was from Nature’s Variety Inc. (translated to “百利公司” ), so there is certain basis for the defendant’s use of “百利本能” .
(2) In the publicity, the defendant did not directly mark or highlight “百利本能” in most circumstances. Instead, it used “百利instinct本能” or “百利本能instinct” . There were no Chinese markings on the product packaging. At the same time, the defendant marked “US Original Import” during sales and publicity of each product, and the relevant consumers could easily judge that the product was an US import product of “INSTINCT” series from Nature’s Variety Inc., instead of a product from the plaintiff, based on the publicity content and product pictures.
(3) The current evidence was insufficient to prove that the plaintiff's trademark had certain reputation in the pet food field. On the contrary, the defendant began to sell “INSTINCT” (translated to “本能” ) series of pet food from Nature’s Variety Inc. (translated to “百利公司” ) in 2012. In the product introduction, it marked “美国原装进口百利instinct本能” (which means “US Original Import百利instinct本能”) or “美国原装进口” (which means “US Original Import”). After a long period of operation and sales, it accumulated a certain consumer group and won a certain market reputation.
(4) Pet food consumers, with their love for pets, usually pay more attention to the safety and nutrition of pet food. It is not difficult for them to distinguish that the defendant's products are imported pet food, which are not the plaintiff's domestic made pet food. The relevant public is not likely to be confused about the source of the goods.
In the above three cases, although the accused infringing trademarks were similar to the registered trademarks, and the accused infringing goods were the same or similar to the registered trademarks’ designated goods, the courts comprehensively reviewed the facts of the cases and considered various factors such as the strength of the trademarks’ distinctiveness, the level of reputation of the registered trademarks, the historical origin of the trademarks’ use, the differences in product positioning, the differences in consumption scenarios, the accurate use of the Chinese translation of a trademark, the consumers’ cognitive abilities, and so on. After careful weighing, the courts finally concluded that the use of the accused infringing trademarks was not likely to cause confusion among the relevant public, and thus, trademark infringement was not established in the respective cases. The common aspect of the Cases 3, 4, and 5 is that the involved registered trademarks all do not enjoy high market reputation.
The reputation of the registered trademarks plays a crucial role in the key aspects of trademark similarity judgment, goods similarity judgment, and likelihood of confusion judgment, which is the core element that cannot be ignored in the judgment of trademark infringement. For trademark users, it is of great significance to accurately assess the degree of reputation of others' registered trademarks in order to study and predict the risk of trademark infringement.
IV. Summary and Suggestions
In trademark infringement cases that are “non-identical” , the likelihood of confusion is the core element for determining whether infringement is established. The judgment should be made from multiple dimensions, including the degree of similarity of the trademarks, the degree of similarity of the goods, the distinctiveness and reputation of the registered trademark, the actual use manner of the accused infringing trademark, and so on. For trademark applicants, it is necessary to conduct a comprehensive search for similar trademarks before starting brand use, which can effectively avoid the risk of “collisions”. During the process of trademark use, they should highlight their own characteristics and avoid imitating well-known brands to prevent market confusion. If, for special reasons, it is necessary to use trademarks that are somewhat similar to prior registered trademarks (for example, for unified manufacturing and global sales of products that require a unified trademark), it is recommended to consult trademark lawyers to conduct a comprehensive and in-depth investigation of the registered trademarks, thereby more accurately grasping and predicting the risks of trademark infringement. When facing infringement litigation, defenses can be made from the perspectives of trademark distinctiveness, reputation, differences in goods, and reasonable and fair use and so on.