Abstract
We, Kangxin Partners, P.C., on behalf of client, TEVA
PHARMACEUTICAL INDUSTRIES LIMITED, filed an opposition action
against the trademark AZILIDE under application No. 69082534 in Class 5
(thereafter referred as “opposed trademark”) and the National
Intellectual Property Administration, PRC (“CNIPA”)
subsequently examined the case and decided to reject the opposed trademark for
registration.
Background
TEVA Group is a global pharmaceutical leader with over 120-year
rich history. Today, TEVA’s global network of capabilities
enables its 37,000 employees across 60 global markets to push the
boundaries of scientific innovation and deliver quality medicines
to help improve health outcomes of nearly 200 million people across
six continents every day. TEVA’s leadership in healthcare has
been trademarked by tenacity, entrepreneurial spirit, and an
aspiration to improve people’s lives. This defines how TEVA
does business and motivates thousands of TEVA employees all over
the world, every single day. Upon finding the opposed trademark,
the client believed that it was similar to their prior registered
trademarks, so that they entrusted us to file an opposition action
against it.
The comparison of the trademarks is as below:
Summary of the case
In this opposition case, we mainly argued that:
1) The opposed trademark is similar to the cited trademark an
both parties’ goods are similar according to Chinese
Classification of Goods and Services, thus, the opposed trademark
and cited trademark constitute “similar trademark over similar
goods”, in violation of Article 30 of China Trademark Law.
2) Given the high reputation of the client and their trademarks,
use and registration of the opposed trademark may easily lead to
confusion and misunderstanding amongst relevant consumers regarding
the resource and quality of the goods.
3) The opposed party filed the trademarks is not for use
intention, in violation of principle of good faith of Articles7
& 8 as well as Articles 4 and 44.1.
The CNIPA made an opposition decision on January 15, 2024: the
opposed trademark is similar to the cited trademarks, and both
parties’ goods are same or similar with respect to functions,
usage and sales channels. Thus, as per Article 30 of China
Trademark Law, the opposed trademark should not be approved for
registration given it constitutes a “similar trademark over
similar goods” with the cited trademarks.
Key Point of the Case
The key point of this case is that 1) the opposed trademark and
cited trademarks constitute “similar trademark” and 2)
The goods of the opposed trademark are similar to those of the
cited trademarks.
According to the Guidelines for Trademark Examination and Trial,
the factors to be considered for trademark confusion and
misunderstanding include: the degree of similarity of goods or
services, the degree of similarity between the trademarks of both
parties, the distinctiveness and reputation of prior trademarks,
etc.
With regard to Point 1, we argued from below aspects:
1) The opposed trademark and cited trademarks are similar in
respect of the composed letters, pronunciation and overall
appearance and we detailed analysis below.
² In term of composed letters and overall appearance, the
opposed trademark is comprised of seven letters, A-Z-I-L-I-D-E and
the cited trademarks are also comprised of seven letters,
A-Z-I-L-E-C-T. The both parties’ trademarks are all share the
letters “AZIL*E* “, and first four letters are all same.
For the English trademarks comprising of over 4 letters, the first
few letters play an important role in distinguishing trademarks. We
further emphasized that the composition and order of the first four
letters of the opposed trademarks and the cited trademarks are
completely identical, making it difficult for relevant consumers to
distinguish the two trademarks amongst the public. Therefore, the
both parties’ trademarks are similar.
² In terms of pronunciation, the pronunciation of the
opposed trademark is [a: zilled], and the pronunciation of
“AZILECT” in the cited trademark is [a: zilekt]. The main
syllable part [a: zille] of the two trademarks is exactly the same,
while the subtle difference between the light consonants [d] and
[kt] in the ending part makes it difficult for relevant consumers
to distinguish them from the pronunciation.
2) The client’s cited trademarks “AZILECT” has no
specific meaning, therefore, it has strong distinctiveness and
originality. According to the Opinion of the Supreme People’s
Court, when determining trademarks similarity, the distinctiveness
and originality acquired by the trademark should be taken into
consideration. The cited trademarks have acquired strong
distinctiveness and originality, and this fact should be fully
considered when judging the similarity and possibility of confusion
and misunderstanding between the opposed trademark and the cited
trademarks.
3) We presented prior similar precedents to prove that the CNIPA
should also apply same criteria in this opposition case.
4) We further submitted the use evidence regarding the
client’s cited trademarks as evidence to prove the high
reputation of the client’s trademarks amongst relevant
public.
All of the aforesaid facts and evidence can prove that
coexistence of the trademarks is likely to lead the public to
believe there is a relationship between both parties, so could
potentially mislead them in respect to products’ source and
quality. With above efforts, we successfully convinced the examiner
that both parties’ trademarks are confusingly similar.
With regard to Point 2, we argued that the goods of the opposed
trademark are similar to those of the cited trademark in accordance
with the Chinese Classification of Goods and Services.
Conclusion
In the opposition cases, if the opponent has an earlier
trademark right, Article 30 will be much important in the
opposition cases. It is very important for the trademark attorney
to make a thorough analysis of similarity of both parties’
trademarks, and present strong evidence, such as prior similar
precedents, materials showing high reputation of the cited
trademarks to prove that they constitute “similar
trademark”. If we could successfully convince the examiner
that both parties’ trademarks are similar, then we could win
the cases.
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.
#TEVA #Successfully #Opposed #Trademark #AZILIDE #Trademark
