2011 Top 10 IP Cases in China’s Software Industry:the sixth

Key point: the standard for similar trademarks

Kingdee Wins Administrative Dispute against the Trademark Appeal Board over the Latter’s Rejection of Trademark Reexamination
 
Case summary: Ki n g d e e S o f t wa r e (China) Co., Ltd. (Kingdee) applied for the registration of “友商网Youshang.com” trademark and design to the Trademark Office of The State Administration for Industry & Commerce of the People’s Republic of China (Trademark Office) on October 9th, 2007. The Trademark Office rejected the application on the ground that Kingdee’s trademark request was similar to two reference registered trademarks of similar service “商友世界www.13911.com,” “商友SHANG YOU” and their designs (No. 3368578). Kingdee appealed to the Trademark Appeal Board seeking reexamination, but the request was denied.
 
Kingdee therefore filed an administrative litigation with Beijing No.1 Intermediate People’s Court against the Board itself, seeking review of the Board’s decision to deny reexamination. After the court session, Decision No. 36477 was issued, which overruled the Trademark Appeal Board’s decision to deny review. The Board was ordered to reexamine the disputed trademarks. The Trademark Appeal Board appealed to the Beijing Higher People’s Court. The Beijing Higher People’s Court held that the focus of this case was whether the disputed trademark was similar to the reference trademarks. After comparison and deliberation, the Beijing Higher People’s Court concluded that the trademarks were very different in overall appearances, composing characters and other factors.
 
The Beijing No.1 Intermediate People’s Court decision was upheld and as a result the Court ruled that the trademarks were not similar. Therefore, the appeal was dismissed and the original judgment was affirmed.
 
Expert comments: This case reflects the principle that the courts and the Trademark Appeal Board have different standards in determining similar trademarks. The disputed trademark and the two reference trademarks were all composed by Chinese words, English words and designs. The Trademark Appeal Board made the decision based solely upon the similarity of the Chinese words and therefore reached the conclusion that the trademarks were similar without giving due consideration to the other two elements. However, the court held that all the elements should be taken into consideration. The differences are generated basically from various standing points. The examiners of the Trademark Appeal Board acted in line with the Standards of Trademark Review, in which the standards of determining similar trademarks are static, fixed and rigid; while the courts took the stand of commonplace citizens who would analyze and judge based on common sense and take the trademarks as a whole. Therefore, the standards adopted by the courts are more scientific, precise and flexible.