Recently, the Supreme Court rendered a favorable judgment [(2016) Supreme Court Administrative Retrial No. 71] on the “YiDa 益达” trademark opposition retrial case filed by WM. WRIGLEY JR. COMPANY (“Wrigley”) against the Trademark Review and Adjudication Board (“TRAB”), which supported WRIGLEY’s requests and ordered the TRAB to make a new ruling concerning the opposed trademark “YiDa 益达” filed by Guangzhou Qian Cai Cosmetic Co., Ltd. (“Qian Cai”).
In this case, we requested that the goods “toothpastes” in class 3 and “chewing gums” in class 30 be recognized as similar goods, and that Qian Cai’ class 3 application for “YiDa 益达” trademark be rejected for registration based on our prior trademark registration for “益达” in class 30. Since it is quite difficult to obtain the cross-class protection in this case, we submitted massive evidence in the review and litigation proceedings to prove the awareness and reputation of Wrigley’s “益达” trademark in the oral care industry, the high relevance and similarity of toothpastes and chewing gums in respect of the function, sales channels, target consumers, etc., as well as the likelihood of market confusion.
The Supreme Court finally ruled that, toothpastes and chewing gums, although different in actual efficacy and distribution channels, are very similar in terms of the function, retail mode and consumption characteristics, and the general public, especially the consumers cannot make an accurate differentiation and judgment on the difference therebetween. So, by combining the differentiation ability of the relevant public and actual market effect, toothpastes and chewing gums shall be deemed as similar goods. The opposed trademark and the cited mark, if used simultaneously on chewing gums and toothpastes, will lead the relevant public to confuse as to the sources of goods or mistakenly believe that there is some relationship between Qian Cai and Wrigley. Therefore, the opposed trademark shall be rejected for registration.
In this case, it is a very valuable breakthrough that the Supreme Court overcame the restriction of the “Classification of Similar Goods and Services” and recognized toothpastes and chewing gums which belong to different classes as similar goods by fully considering the characteristics of the concerned products as daily consumables, the differentiation ability of the relevant public and actual market effect. The judgment fully respects the basic function of the trademark to identify sources of goods, conforms to legislative intention of the Trademark Law to prevent market confusion and maintain market order, and has important guiding and reference value for the standard of similar goods judgment.
This is another victory of our trademark litigation team in the retrial proceeding at the Supreme Court, which again shows the high professionalism and expertise level of our team.
