With the increase in the number of trademark applications in China, more and more companies will receive rejection notices from the Trademark Office during the trademark application process. So, when an enterprise receives a rejection notice from the Trademark Office, what attitude should it adopt? Should it actively defend (submit a rejection review application) or passively accept it?
The author will not answer this question for the time being. , first briefly sort out the reasons why trademark office examiners reject trademark applications, so that companies can not only know the reasons but also the reasons.
Rejection of an application for trademark registration refers to a trademark application for registration that violates the prohibitive provisions of the Trademark Law on all goods or services or on some goods or services in accordance with the law during its substantive examination by the Trademark Office, or on An application for registration of a trademark on the same or similar goods that conflicts with a registered or preliminarily approved trademark will not be registered.
Therefore, the Trademark Office’s reasons for rejection can be simply summarized as “absolute reasons for violating prohibitive provisions” and “relative reasons for conflict with prior trademark rights.” Articles 10, 11 and 28 of the Trademark Law respectively provide detailed provisions. Article 10 of the Trademark Law is a mandatory legal provision. Once there is an absolute reason for violating the prohibitive provisions, even if a review is submitted, the possibility of success is very small. Therefore, it is recommended that enterprises try to avoid the prohibitive provisions in Article 10 of the Trademark Law when designing trademarks. If the application is rejected by the Trademark Office under this article, it is not recommended that the enterprise (applicant) submit a reexamination application unless the enterprise (applicant) can provide relevant supporting documents.
In other trademark rejection cases, it is recommended that the enterprise (applicant) actively defends, especially when the rejected trademark has been put into commercial use and commercial promotion, active measures should be taken. attitude to fully protect their legitimate rights and interests. The following is my humble opinion on how to defend against the rejection of a trademark application based on Articles 11 and 28 of the Trademark Law:
1. Based on Article 11 of the Trademark Law Rejection of a trademark review application
Although the first paragraph of Article 11 of the Trademark Law lists three situations that are inconsistent with the Trademark Law, in essence, the basis for rejection of these three items is It's really the same thing: lack of distinctiveness. The distinctiveness of a trademark refers to its characteristics that can distinguish the products/services of a product manufacturer/service provider from other identical or similar products/services. This is the most basic and important feature that a logo should have as a trademark. It directly determines whether the logo can become a trademark and be protected by my country's Trademark Law.
Because according to Article 8 of the Trademark Law: “Any visible mark that can distinguish the goods of a natural person, legal person or other organization from the goods of others, including words, graphics, letters, Numbers, three-dimensional logos and color combinations, as well as combinations of the above elements, can be applied for registration as trademarks." Therefore, if a visible mark cannot play a role in distinguishing the products/services of different product producers/service providers time, then this visible mark cannot be applied for registration as a trademark.
Items (1) and (2) in Article 11, Paragraph 1 of the Trademark Law are enumerations of marks that lack distinctiveness. Under normal circumstances, such marks cannot be For the purpose of distinguishing different product/service providers, for example: applying "502" to "glue"; applying "XXL" to "clothing", etc. Such a mark is only the name or model of the product and cannot serve the purpose of distinguishing the manufacturers of different products. The third item is a general term for various situations that lack significance other than those listed in the first two items. For example, apply "good fragrance" to "rice", apply "Hunan embroidery" to "clothing", etc.
The distinctiveness of a trademark can be divided into two types: "inherent distinctiveness" and "distinctiveness obtained through use." The trademarks listed above are all trademarks that lack "inherent distinctiveness", that is, the trademark composition The trademark itself lacks distinctiveness, but if the company has carried out extensive and continuous advertising and publicity work for the trademark so that the relevant public can associate the trademark with the products provided by the company, generally speaking, the trademark is considered to have been acquired through use. Distinctiveness can serve the purpose of distinguishing the products/services of different product producers/service providers. In this case, the trademark can be approved for registration. Successful cases in this area include the banking industry’s “all-in-one card”, the catering service industry’s “Little Sheep” and the dairy industry’s “Sour Yogurt”. These three trademarks were all rejected by the Trademark Office’s examiners during the registration stage. It was rejected on the grounds of "lack of distinctiveness", but the three companies (applicants) did not give up and actively filed applications for review. They used a large amount of use evidence to prove that these trademarks have acquired a secondary meaning after extensive and continuous advertising. With strong referentiality, relevant consumers have closely associated these trademarks with their companies, so these trademarks have actually served to distinguish the products/services of different product producers/service providers. purpose, thus having the distinctiveness that a trademark should have.
In summary, once a company’s trademark is rejected by the Trademark Office examiner based on this article, if the applied trademark has been widely used and promoted by the company, the company needs to provide all use evidence materials to prove The trademark has acquired "secondary meaning" through extensive use by enterprises, that is, it has acquired distinctiveness.
In addition, the contents of paragraph 1 (1) and (2) of this article are "only the common name, graphics, and model of the product" and "only directly represent the product." "quality, main raw materials, functions, uses, weight, quantity and other characteristics". In actual situations, trademark applications are rarely only composed of the above elements, but are generally composed of other elements together. Therefore, this is also This is an aspect that an enterprise can argue vigorously when requesting a rejection for review.
2. Rejection of trademark review application based on Article 28 of the "Trademark Law"
Conflict with prior trademark rights as specified in Article 28 of the "Trademark Law" , mainly means that the trademark applied for registration is identical or similar to a trademark that has been registered or preliminarily approved by others on the same or similar goods. As the number of trademark applications in China increases, more and more trademarks are rejected based on this article. So in this case, where should an enterprise start its review application? Because the circumstances of specific cases are complicated, it is difficult to It’s hard to sum it up in one word. The author will give a brief explanation through the following two cases:
(1) Case of rejection of trademark in Class 41
The Trademark Office examiner argued that the trademark is the same as "a previously registered trademark". The trademarks "Dream" and "ONEDREAM" were similar, so the application was rejected. The differences between the rejected trademark and the two cited trademarks are as follows:
The first impression many people have after seeing the comparison of trademarks above is that the rejected trademark is not similar to the two earlier trademarks.
Why was the trademark rejected by the examiner? This is because when the Trademark Office examines the combination of text and graphics, the trademark is examined separately, instead of simply being examined as a whole. In this case, the examiner believed that the English part of the rejected trademark "Mr. DREAM" was similar to the two cited trademarks mentioned above. Therefore it was dismissed.
In this case, the author believes that: First of all, the text part "Mr. DREAM" (meaning Mr. Dream) in the rejected trademark has different meanings from the two cited trademarks: "Mr. DREAM" (meaning Mr. Dream) Mr. Meng) actually refers to Mr. Meng - a person; and the meaning of the two cited trademarks is "a dream", referring to the natural phenomenon or thing of dreams. Secondly, the rejected trademark as a whole is not similar to the two cited trademarks. The graphic part of the rejected trademark is very distinctive, and the relevant public can distinguish it from the two cited trademarks at a glance. Can cause confusion.
Therefore, the examiner of the Trademark Office examines the combined trademark separately during the examination, but after rejection, when a reexamination application is submitted, the examiner of the Review and Adjudication Board examines the trademark as a whole. Therefore, once a certain part of an enterprise's combined trademark is similar to an earlier trademark and is rejected, the enterprise should submit a review based on whether the entire trademark is similar to the earlier trademark.
(2) Case of rejection of the "WOS" trademark in Class 35
The trademark was rejected on the grounds that it was similar to the previously registered trademark "WDS". According to my country's trademark Examination experience shows that if two trademarks like this are composed of three English letters, the first and last letters are the same, and only the middle letter is different, they will generally be recognized as similar trademarks.
The actual situation of the applicant in this case is: "WOS" is the abbreviation of its self-designed online ordering system (WebOrderSystem). It is only open to members. When using it, you need to log in to the applicant's official website for subsequent operations. . Moreover, the applicant has commercially used and promoted the trademark. Failure to register it will cause great losses and trouble to the applicant.
According to the actual usage pattern of the trademark in this case, it can be seen that the customers using the "WOS" system are old customers who are very familiar with the applicant, and they need to register as a member before using it, and the procedure for registering as a member is It is very rigorous and complex. Under such circumstances, it is difficult to cause confusion among relevant consumers.
Therefore, although the "WOS" trademark and the "WDS" trademark constitute similar trademarks only from the perspective of trademark composition, due to the different consumer groups of the two, there will be no mis-purchase or accidental purchase. Infringement of the interests of relevant consumers.
To sum up, the author believes that whether the rejected trademark and the cited trademark are similar cannot simply be judged from the text composition. It also needs to be based on the designated products/services, the cognitive habits of the relevant public, and industry characteristics. Comprehensive analysis based on actual usage conditions.
In the real world, trademark applications involve all walks of life. It is easy for the examiner to not know much about the product or industry for which the company is applying, and will only review the textual structure of the trademark. In this way, if it is rejected, , it is recommended that enterprises actively defend themselves to protect their legitimate rights and interests.