Kavin Tan | Nov 20 2020

The Case in Question

The Chinese Trademark Office refused the application “MERLIN” for being similar to an earlier registration featuring “SN and 隼” ( “隼”, phonetically sǔn, can be deemed as one of the Chinese translation of “MERLIN”), according to Article 30 of the Trademark Law.

Reproductions of the two trademarks are shown below.

Decision

The refusal was appealed to the Trademark Review and Adjudication Board, a.k.a TRAB (now incorporated into CNIPA), and it ruled: there were differences of the overall composition and calling between the applied-for trademark and the cited trademark which can be distinguished by an average consumer with ordinary observation. The applied-for trademark did not constitute a similar trademark as referred to in Article 30 of the Trademark Law.

Spotlight

Whether English trademarks are similar to their Chinese counterparts?

According to the interpretation of the Trademark Examination and Trial Standards, trademark similarity refers to, for word trademarks - similarities of appearance, pronunciation and meaning of characters; for device trademarks - similarities of composition, colour and overall appearance; and for combined trademarks - similarities of overall layout and appearance.

For the mentioned case, we believe the following points should be considered:

● Correspondence

According to mainstream translators, the applied-for trademark "MERLIN" can be translated as "隼" and "灰背隼" as nouns, and as "梅林 (phonetically meilin), 默林 (phonetically molin) or 梅兰 (phonetically meilan)" as personal names. It can also be interpreted to mean something else, such as a place of Canada. According to the translators, "MERLIN" is used in most cases as a personal name. One can hardly conclude that a unique correspondence has been established between "MERLIN" and "隼".

● Level of awareness

China is not a native English speaking country, and it is less likely that the relevant public can establish an effective correspondence between "MERLIN" and "隼". Furthermore, the regular English translation of “隼” is "Falcon", as shown on Baidu Baike, a Wikipedia-like encyclopedia in China. Such that, from the relevant public's perspective, a proper English translation of "隼" would be " Falcon."

● Overall appearance and composition

Whether two trademarks are similar should be considered by the relevant public with an ordinary observation in isolation, rather than by a side-by-side comparison. The applied-for trademark is a plain-text word trademark, while the cited trademark is a combination of two artistically designed and large-sized Latin letters "SN" and a tiny Chinese character "隼". The "SN" is arguably the striking feature of the cited trademark, and the relevant public can readily distinguish it from the pain-text "MERLIN" applied-for trademark.

The above three points were used as grounds in the review of the refusal and were backed by TRAB. And more generally, the following two points should also be considered:

1. Reputation and distinctiveness

FEDERAL HOME LOAN MORTGAGE CORPORATION opposed the Chinese trademark application No. 6554134 “房地美” (phonetically Fangdimei) based on its older Chinese registration No. 1287307 “FREDDIE MAC” (roughly corresponds to “房地美” in terms of pronunciation). The once-failed opposition got reversed in the Supreme Court. The Court held that there is evidence that “房地美” is one of the Chinese transliterations of “FREDDIE MAC”, and the two have formed a solid (not unique though) correspondence. Furthermore, the Chinese transliteration “房地美”, which is thought to be associated with FEDERAL HOME LOAN MORTGAGE CORPORATION, has gained a considerable reputation in financial services such as mortgage loans. Therefore, it is ruled that the two constitute similar trademarks.

2. Translation rules and language habits

In a “DAY DAY UP” vs. “天天向上” case, the applied-for trademark - No.22683352“DAY DAY UP”, a literal translation of “天天向上”, was considered similar to the cited trademark - No.7681658 “天天向上” by both the Trademark Office and the then TRAB. The case was appealed to courts, and both instances resulted in decisions contrary to the Trademark Office and TRAB. The court of the first instance found that: although TRAB claimed that there was the use of "DAY DAY UP" as a translation of "天天向上" in daily life, it failed to sufficiently evidence that this unconventional use has become prevalent among the relevant public. On the other hand, the conventional English translation of "天天向上"is "MAKE PROGRESS EVERY DAY". Therefore, the two trademarks are not identical in terms of overall appearance, pronunciation, and meaning, and they were not similar trademarks.

In this case, both courts held that unconventional translations should not be supported and that the mainstream rules and language habits of Chinese and English translation should be considered.

To sum up, whether an English trademark is similar to its Chinese counterpart should be determined based on whether it is likely to confuse the relevant public. Among others, factors such as overall composition and appearance, correspondence, reputation, and general awareness of the relevant Chinese public about the trademark in question should be considered.

Legal Basis:

Trademark Law of the People's Republic of China

Article30: Where a trademark the registration of which has been applied for is not in conformity with the relevant provisions of this Law, or it is identical with or similar to the trademark of another person that has, in respect of the same or similar goods, been registered or, after examination, preliminarily approved, the Trademark Office shall refuse the application and shall not publish the said trademark.