“MK” Probable Confusion TM Case

The Principle of Probable Confusion Applied in the Determination of Similar Trademarks for the “MK” Case

Co-Author:  Edmond Ou, Steven Dong

Recently, the Supreme People’s Court handed down the [2019] No. 6283 ruling and dismissed the retrial application of the trademark “” by Shantou Chenghai JIAN FA Hangbag Craft Factory, which has become the only losing case of “reverse confusion” that has attracted wide attention in recent years. With respect to the other reverse confusion cases winnings, such as “Lan Se Feng Bao” and “Mi Jia”, this case adverse outcome is closely related to the subjective intention of the plaintiff. For instance, the plaintiff has imitated the “MK” trademarks of the defendant MICHAEL KORS (SWITZERLAND)  INTERNATIONAL GMBH in both the trademark registration application and the actual use since 2015.

The ruling is also tied to the current market situation. The plaintiff primarily sold abroad and failed to draw stable domestic consumer groups loyal to the brand and take a stable place in the market, while the defendant has used a combination of “MK” and “MICHAEL KORS” as a trademark for a long time, so that the “MK” mark has accrued certain repute, establishing one-to-one correspondence with the defendant, and carved a stable niche in the market, wiping out the possibility of confusion.

It is worth noting that the Supreme Court stated in its dismissing ruling: “Secondly, to judge whether the disputed mark and the registered trademark constitute similar trademarks, we should not only examine the degree of similarity of each constituent element of the mark itself but also review whether it will cause confusion and misidentification among the relevant public.” The author agrees with this opinion which prompts the author to discuss the “determination standards for the similarity of trademarks” in Article 30 and Article 57 of the Trademark Law. Among them, Article 30 is the provision on the determination standards for the similarity of trademarks at the examination stage of trademark registration, and Article 57 is the provision on the determination standards for the similarity of trademarks in cases of trademark infringement. [see below for relevant provisions]

According to the literal meaning of the law, Article 30 of the trademark law does not stipulate “confusion” as conditions of similarity determination, which means that before the TM application date, as long as there is a similar or identical trademark on the same or similar goods which had been preliminarily approved or registered, the China National Intellectual Property Administration (CNIPA) can reject the TM application pursuant to the article. In cases of TM refusal reviews, oppositions, and invalidations, if the disputed trademark is not highly similar with the cited trademarks or has only certain discrepancies, and the holder of the disputed trademark can prove with evidence that the disputed trademark has had certain repute via use, has an established market influence and attracted stable consumer groups to the extent that it is not apt to rise confusion among the relevant public, the CNIPA may therefore confirm the non-similarity of both sides.

In short, at the stage of the trademark registration examination, CNIPA will render an examination decision based on the literal meaning of Article 30 of the Trademark Law by only considering the degree of similarity of the mark itself and whether the commodities are similar.

In cases including TM refusal reviews, oppositions, invalidations, and lawsuits, the CNIPA, as well as the courts, will all-roundly consider the degree of similarity of involved trademarks itself and the probability of actual confusion among the relevant public. If both will not cause confusion in essence, the adjudication organs would hence hold that both do not constitute similar marks, based on Article 30 entailing the determination of probable confusion.

Although Paragraph 1 of Article 57 of the Trademark Law does not explicitly provide that “it is likely to cause confusion”, it provides for “the use of a trademark identical with a registered trademark on the same goods” where inevitably it leads to confusion in practice, i.e., there is no need to emphasize again in the provisions. The second paragraph stipulates constituting a trademark infringement must meet the conditions of “easy to cause confusion” in addition to the similarity of the marks. Literally, “on the same commodities to use the similar trademark with a registered trademark” or “on similar commodities to use the same or similar trademark with a registered trademark”, and “easy to cause confusion” belong to two parallel conditions in Paragraph 2.

However, in practice, the “confusion possibility” principle runs through the whole process to determine similarity, namely the court in determining whether the trademarks are similar is bound to consider whether there is the possibility of confusion among the relevant public. If the possibility of confusion is higher, it is concluded that the two trademarks constitute similar trademarks accordingly.

Therefore, the author views that in combination with judicial practice, Paragraph 2 of Article 57 should be understanding a broad sense which refers to “on the same commodity to use the similar trademark with a registered trademark” or “used on the similar commodity to use the same or similar trademark with a registered trademark” requiring “enough to cause the relevant public confusion and mistakes”, i.e. similar trademarks that are likely to cause confusion or misunderstanding.

The reasoning of the Supreme Court’s dismissing ruling embodies Article 57.2 of the Trademark Law regarding the substantial connotation of trademark infringement, that is, toward judging whether the infringing mark and the registered trademark constitute similar trademarks, shall not only examine the similarity of the constituent elements of the mark itself but also review whether they will cause confusion and misidentification among the relevant public.

To sum up, the author holds that the principle of confusion possibility plays a different role in different case types, from light to heavy, which are TM registration examination, opposition, invalidation, and civil litigation of trademark infringement.

As mentioned above, in the registration examination stage, the CNIPA will conduct an examination in strict accordance with the literal meaning of Article 30 of the Trademark Law, with less consideration given to the possibility of confusion. In cases of oppositions and invalidations, the disputed trademark preliminarily approved or registered may not be highly similar to the cited trademarks in a sense. Hence, the applicant for opposition and invalidation needs to expound and give evidence re causing confusion among the relevant public. In civil cases of trademark infringement, once the defendant violates article 57.2 of the Trademark Law, he generally would assume the liability such as compensation for losses to the plaintiff. Therefore, such cases require the plaintiff to elaborate on “causing the relevant public into confusion” with a comparatively heavier proof burden.

Relevant provisions:

Trademark Law:

Article 30:

Where the trademark for registration does not comply with the relevant provisions of this Law or is identical with or similar to another party’s trademark which has been registered or preliminarily approved for use on identical or similar goods, the trademark Office shall reject the application and shall not publish the trademark.

Article 57:

Any of the following conduct shall be an infringement upon the right to exclusively use a registered trademark:

(1) Using a trademark identical with a registered trademark on identical goods without being licensed by the trademark registrant.

(2) Using a trademark similar to a registered trademark on identical goods or using a trademark identical with or similar to a registered trademark on similar goods, without being licensed by the trademark registrant, which may easily cause confusion.

(3) Selling goods which infringe upon the right to exclusively use a registered trademark.

(4) Forging or manufacturing without authorization the labels of a registered trademark of another party or selling the labels of a registered trademark forged or manufactured without authorization.

(5) Replacing a registered trademark without the consent of the trademark registrant and putting the goods with a substituted trademark into the market.

(6) Intentionally providing facilitation for infringement upon others’ right to exclusively use a registered trademark or aiding others in committing infringement upon the right to exclusively use a registered trademark.

(7) Otherwise causing damage to the right to exclusively use a registered trademark of others.