Law Application on TM Opposition
Views on the Expatiation of Deception and Confusion Clause in Trademark Opposition from Case Monet
In recent years, an increasing number of applications for the registration of trademarks containing “莫奈 / Monet” in classes 18, 20, 24, 30, 41, and 43 have passed the substantive examination, and have been initially examined and published by the Trademark Office. As the owner of the brand “Claude Monet”, ACADEMIE DES BEAUX-ARTS considered that such trademarks infringed its prior rights and filed trademark opposition applications with the Trademark Office against several trademarks that had already been initially published.
Upon examination, the Trademark Office concluded that, prior to the application for registration of the opposed trademark, CLAUDE MONET had a high reputation in China, and that the opposed trademark would easily mislead the relevant public that the goods or services indicated by the trademark were specifically related to the late famous French artist CLAUDE MONET, which would easily cause confusion and misunderstanding among the relevant public. In accordance with Article 10.1.7 of the Trademark Law, Trademark Office decided that the opposed trademark shall not be registered.
As stipulated under Article 10.1.7 of the Trademark Law, a sign which is deceptive and easily misleads the public regarding the quality or origin of goods may not be used as trademarks. Specifically, in trademark opposition proceedings, cases of non-registration of such opposed trademarks by the Trademark Office based on the afore-listed Article are frequent. In this regard, the author has selected several cases of opposition to the trademark “莫奈 / Monet” to expound the application of Article 10.1.7 in the cases of trademark opposition.
1. Criteria for determining “deceptive”
Article 10.1.7 of the Trademark Law is intended to protect the public interest and maintain the trademark order by prohibiting the registration of trademarks that may be deceptive and easily mislead the public. A “deceptive sign” is generally considered to be a mark that represents the quality and other characteristics of the goods or services designated for use or the place of origin in a manner that exceeds its inherent degree or is inconsistent with the facts, and that is prone to cause the public to have a false perception of the quality and other characteristics of the goods or services or the place of origin.
Specifically, it can be judged from the following two aspects.
a) Whether the sign is closely related to the quality, character, function, application, raw materials, content, weight, quantity, price, process, technology, origin, and other features of the goods or services, and deceives or brings about misidentification of the attributes of the goods or services.
b) Whether the sign is misleading to the relevant public mainly depends on whether the constituent elements of the mark itself would cause the relevant public to misunderstand the subject of the business of the goods or services designated by the sign, thus leading to misidentification and misled purchase. If according to the general perception of the relevant public, the sign is sufficiently misleading, it shall be deemed to be “deceptive”.
In short, the core part for determining whether the sign would mislead the relevant public as to the quality and other features of the goods or services or the origin lies in whether the sign constitutes a scenario under Article 10.1.7 of the Trademark Law.
In the case of opposition regarding the trademark “Monet”, the opposed trademark “莫奈 / Monet” contains the name of the late French artist “CLAUDE MONET”. It is highly likely that the relevant public, based on their awareness and knowledge, would when exposed to the opposed trademark, believe that the goods or services indicated by the trademark are associated with the late famous French artist CLAUDE MONET as it contains the word “莫奈” or “MONET”. And thus, the relevant public would misunderstand the subject of the goods or services designated by the opposed trademark and be deceived or misled. Therefore, the application for registration of the opposed trademark “莫奈/ Monet” falls within the scenario of Article 10.1.7 of the Trademark Law.
2. Distinguishing the application of Article 10.1.7 and Article 10.1.8 of the Trademark Law
The author notes that in most of the concluded opposition cases regarding the trademark “莫奈 / Monet”, Trademark Office has applied the provisions of Article 10.1.7 of the Trademark Law to decide that the opposed trademark should not be registered. However, in the case regarding trademark No.28735312 “Claude Monet / 克劳德莫奈”, the decision made by Trademark Office indicated that the opposed trademark shall not be approved for registration for having any other adverse effect under Article 10.1.8 of the Trademark Law. As can be seen, there are different views and approaches in practice.
Article 10.1.8 of the Trademark Law stipulates that “other adverse effect” refers to the negative and adverse effects of the words, graphics, or other constituent elements of a trademark on the political, economic, cultural, religious, ethnic, and other social public interests and public order in China. The determination of this provision shall consider factors, such as social background, political background, historical background, cultural tradition, national customs, and religious policies, as well as the composition of the trademark and the goods and services designated for use.
In the author’s view, Article 10.1.8 of the Trademark Law is a public policy, which has different connotations and extensions from Article 10.1.7 of the Trademark Law, and attention should be paid to distinguishing the scope of application of the two articles. In the case of trademark opposition to a celebrity such as “莫奈 / MONET”, Article 10.1.7 of the Trademark Law shall be applied.
The determination of “deceptive” should be made in the light of the circumstances of the case, the constituent elements of the sign, and the general level of awareness of the public concerned. And any sign that exceeds the threshold of reasonableness should be deemed to be deceptive. The significance of this is to reconcile conflicting factors through the application of the law so that the interests of all parties concerned are balanced and orderly market competition is ensured.