Determination of similar goods in trademark invalidation procedures

Established trademark rights are the foundation of trademark enforcement. In China, the request for invalidation is one of the trademark affirmation procedures. By analysing the cases she represented, the author preliminarily explores the circumstances under which the Trademark Review and Adjudication Board (TRAB) goes beyond the classification of goods and services in determining goods similarity under article 30 of the Trademark Law in request for invalidation.

In accordance with article 3, paragraph 1, and articles 57 and 58 of the Trademark Law, for rights-based trademark enforcement, the trademark of the rights holder should be registered, unless it is a well-known trademark. It is stipulated in article 45, paragraph 1 of the Trademark Law that, “where a registered trademark stands in violation of the provisions of articles 13.2 13.3, 15, 16.1, 30, 31, and 32 of this law, any prior rights holder or interested party may, within five years from the date of registration of the trademark, file a request with the TRAB for adjudication to declare the registered trademark invalid …”. The prior rights holder or interested party may request invalidation based on its relative rights. The right to the registered trademark in invalidation procedure will be unstable when the case is pending.

The rights holder or the interested party may request for invalidation based on article 30 of the Trademark Law, which provides that “where a trademark application does not comply with relevant provisions in this law, or is identical with, or similar to, a registered or preliminarily approved trademark used on the same kind of goods or similar goods, the Trademark Office shall reject the application and shall not publish the trademark”. This provision is applied not only by the trademark authority in administrative cases of trademark affirmation (opposition and invalidation) but also by the Trademark Office in rejecting a trademark application initiatively. This article will only discuss the TRAB’s adjudication on similarity of goods as provided in article 30 of the Trademark Law in invalidation procedure.

Claire Zhao is an associate and trademark attorney at Sanyou Intellectual Property Agency