Our firm, representing STUDIO PEYO S.A., opposed the trademark application No. 6713412 for 蓝精灵 (SMURF in Chinese) filed by LIU Wenshu for goods in class 30, and the TRAB, the Beijing No. 1 Intermediate Court and the Beijing Higher Court all supported our claims and decided that the opposed trademark “SMURF in Chinese” is similar to our client’s prior trademark registration No. 1623034 for SMURF character image in respect of similar goods and shall not be registered.
This case is about the determination on the similarity between a word trademark and a device trademark and is rather difficult. During the review and the litigation procedure, we submitted a lot of evidence proving that the Smurf animation movies, the Smurf character and the name “Smurf in Chinese” have achieved great popularity in China and have been associated with each other by the consuming public and refer to the same thing. Thus, the coexistence of the opposed trademark “SMURF in Chinese” and our client’s cited trademark SMURF character image in respect of similar goods would cause confusion to the consuming public as to the origin of goods, and the opposed trademark and the cited trademark constituted similar trademarks in respect of similar goods.
The TRAB and the courts of two instances all supported our claims. The Beijing Higher Court in its final judgment held that the Smurf animation movies have achieved certain popularity among Chinese consumers, and the coexistence of the opposed trademark and the cited trademark in respect of similar/same goods would easily mislead the consuming public into believing that the goods under the two trademarks originate from the same entity or the providers of the goods under the two trademarks are affiliated thus be confused as to the origin of the goods. The opposed trademark and the cited trademark constituted similar trademarks in respect of similar goods, and the opposed trademark shall not be registered.
In this case, the TRAB and the two courts, took into consideration the popularity of the cited trademark to the related public in China and the consumer confusion that is likely caused by the coexistence of the trademarks, broke the limitation on the judgment of the similarity of trademarks through the comparison of the constitution and overall look and decided that a word trademark is similar to a device trademark, which is of great guiding significance and value to the similarity judgment of t famous character names and the character images.