Jinjia SU is the applicant of the "
" mark with app. No. 32253377
("Disputed Mark"). Beijing Xiaoguncha Co., Ltd.
("Xiaoguancha") filed an opposition against the Disputed
Mark based on its prior marks such as "
" and "
." Jinjia SU argued that the word
"Xiaoguancha in Chinese" in Xiaoguancha's prior marks
lacked distinctiveness, and the scope of protection should match
its distinctiveness and should not hinder the legitimate use of
other market entities. After trial, the Beijing High Court
determined that the distinctiveness of the words "Xiaoguancha
in Chinese" is not a factor to consider in determining whether
a disputed mark and the cited marks constitute similar trademarks.
If the distinctiveness of cited marks is overemphasized and later
marks allowed to be registered by adding other elements to the
cited marks that have been allowed, it will be seen as a direct
denial of the validity of the cited marks when judging similarity.
This practice not only indirectly invalidated the cited marks,
damages the cited mark owner's rights, and impacts the
trademark registration order. The cited marks in this case have
been approved for registration, and their validity should be
respected. Therefore, Su's lack of distinctiveness argument
cannot be supported.
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