According to the examination criteria:
- For pure device marks, the marks shall be considered as similar marks if their composition and overall appearance are similar and coexistence of them may cause confusion, such as VS .
- For combination marks that composed of device and word parts, the marks shall be considered as similar marks if their device parts are similar and coexistence of them may cause confusion, such as VS .
Our client's application for trademark, (No. 36295340) was rejected by the National Intellectual Property Administration, PRC ("CNIPA") citing the prior registered mark, (No. 14749988), according to the above examination criteria. We filed the review of refusal and the CNIPA finally approved the client's trademark. In the decision for the review of refusal concerning the mark, the CNIPA held that our client's mark is different from the prior cited mark in terms of components, pronunciation and design style. The consumers could distinguish the marks from each other with normal attention. The marks do not constitute "similar marks over identical or similar goods" under Article 30 of China Trademark Law.
In this case, the distinctive baby device parts of the two marks are with similar sitting postures, facial expression and overall appearances. However, the two marks' different word parts and combination way offset their similarity and makes them distinguishable from each other in terms of overall appearance, pronunciation and meanings.
Considering the surge of trademarks' amount in China, it becomes much more difficult to smoothly register marks than before. It is important to conduct trademark search before filing to better evaluate the situation. You can conduct trademark clearance searches for free on Kangxin IP Platform ( https://eservice.kangxin.com) which is based on Artificial Intelligence technology. If there are prior confusingly similar marks to the pure device mark or pure word mark, one option to increase the chance of success of registration is to combine the distinctive device part with distinctive word part in different way and file application for the combination mark. But this will depend on different situation. Our attorneys are ready to provide detailed analysis and advice whenever you need.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.