Determination of Trademark Similarity: Comments on the Administrative Lawsuit Involving the Trademark of "BEYOND PETRONEUM"

Liang Hui

I. The case in brief

The plaintiff the BP Co., Ltd. (the BP for short) filed with the Trademark Office two applications for registration of trademarks "BEYOND PETRONEUM" and "超越石油" (the trademarks in suit) (the Chinese characters "超越" are equivalent to the English word "BEYOND" and the Chinese characters "石油" are equivalent to the English word "PETRONEUM") in goods of class 4 of the International Classification: industrial oil and wax (raw material). The Trademark Office held that the two trademarks were similar to trademark No.1720395 "超越矿业 and device" (meaning "beyond mining industry") (reference trademark 1) registered in the goods of wax used on conveying belt and trademark No. 956456 "超越 and the device" (reference trademark 2) registered in goods of industrial grease and oil, and refused said applications.1

Dissatisfied with the Trademark Office's decision on the refusal, the BP applied to the Trademark Review and Adjudication Board (TRAB) for reexamination of the applications. The TRAB believed that the grounds for the reexamination were not tenable, and the two trademarks in suit should not be approved for registration.2 Dissatisfied with the TRAB's adjudication, the BP brought an action in the Beijing No.1 Intermediate People's Court. The Beijing No.1 Intermediate People's Court upheld the decision made by the TRAB,3 and the BP did not appeal. Now the two trademarks have been rendered invalid. This writer believes that the court gave too much consideration to the relevance between the two cases in the two administrative trademark lawsuits, and failed to objectively review the presence of similarity between the trademark "BEYOND PETRONEUM" and said reference trademarks in terms of the sound, form and meaning of the words of the trademarks; overemphasised the role of the meaning of trademark in distinguishing the origin of goods, and failed to consider whether they were likely to create confusion on the part of the consumers in their process of consumption; and, in doing so, extended the extent of protection of the exclusive right to use the prior trademarks and actually impaired the right of the later trademark applicant.

II. Standards for determination of trademark similarity

What is at issue in the above two cases is whether the BP's trademarks are similar to the two reference trademarks. Neither the Chinese Trademark Law nor the Regulations for the Implementation of the Trademark Law have set forth any specific provisions on the standards for determination of trademark similarity. The Trademark Office and the TRAB interpreted that trademark similarity in the word, sound and meaning of a trademark is such that use of the trademark is likely to create confusion about the origin of goods on the part of the relevant section of the public;4 The Beijing Higher People's Court, interpretation of the similarity of word trademark goes like this: the determination of the similarity of word trademark depends on whether it is likely to create confusion on the part of the relevant section of the public, with account taken of whether such aspects as the sound, form and meaning and order of the lexical items are likely to create confusion and with the word trademark treated as a whole;5 the Supreme People's Court (SPC) provides that the similarity of trademark means that the alleged infringing trademark, by comparison, is similar to the plaintiff's registered trademark in shape, sound, meaning of words, and is likely to cause the relevant section of the public to confuse the source of goods or think that the source of goods is related, in a particular way, to the plaintiff's registered trademark.6 The trademark administrative authorities and the courts, though different in the way of expression, follow, in principle, substantially the similar principles underlying the standards for the determination of similarity of word trademarks:
1) whether the word trademark in suit is similar to a reference trademark in sound, typeface and/or meaning; and
2) whether the relevant section of the public are likely to confuse the origin of goods.

Only when the two circumstances are present is the trademark in suit determined as a similar one. Whether the above two trademarks in suit are similar to the reference trademarks should also have been determined according to these two principles.

III. Whether the trademarks in suit are similar to the reference trademarks in sound, typeface and/or meaning

In determining whether the trademark "超越石油" in suit is similar to the two reference trademarks, the court holds: the word "petroneum" in the trademark in suit refers to the industry of the goods in which the trademark is to be registered, and it is not distinctive; hence the distinctive part is the word "BEYOND", the case is also true with the reference trademark "BEYOND MINING INDUSTRY". For that matter the distinctive part in all the three trademarks is "BEYOND", and the two reference trademarks are similar. Whether trademarks are identical or similar should be determined with the comparison made not only between the trademarks as a whole, but also between the distinctive parts thereof. This is a consistent principle on which the court makes its comparison7, which confirms to the customary way of recognition of consumers.

When determining whether the trademark "BEYOND PETRONEUM" in suit is similar to the two reference trademarks, for a trademark of a word in English, if it is not a coined word, the major Chinese meaning corresponding to the English word should be taken into consideration. The English word "PETROLEUM" of the trademark "BEYOND PETRONEUM" means petroleum, which stands for the industry of the trademark in suit, and it is not a distinctive part. The distinctive part of the trademark is "BEYOND", which is not a coined lexical item, but a real English word with a meaning equivalent to the meaning in the neighbourhood of "exceed or going beyond" in Chinese. Besides, the plaintiff intends the word "BEYOND" to be equivalent or correspond to the Chinese word "超越" (also "exceed or going beyond"); hence, the court determines that the trademark "BEYOND PETRONEUM" is similar to the two reference trademarks.

As the court's ruling shows, the only basis on which the court determines the similarity of the trademarks is the meaning of the word. For this writer, in determining the similarity of a Chinese trademark and an English trademark, full consideration should be taken of the sound, shape and/or meaning of the trademarks, not only with comparison of the meaning thereof. For most Chinese consumers, the pronunciation of an English trademark plays the largest role in trademark identification. Consumers identify many English trademarks, such as "EXXON", "SONY" and "KODAK", through their sound, without paying attention to their meanings. Besides, many Chinese consumers can pronounce English trademarks with the help of their spelling. Even if a trademark has no meaning of its own, its pronunciation shows the origin of goods.

Some scholars believe that as a rule, the determination of the extent of protection for an English trademark depends on its well-knowness in the country where it is protected. Where a trademark in a foreign language has its own meaning, the free translation is protected, subject to the extent to which said meaning is known to the average public or the relevant section of the public.8 This writer also agrees to the view. If a trademark has meaning unknown to the average member of the public, then, the relevant section of the public would not associate the trademark with its meaning, nor is it likely for them to confuse it. Likewise, when determining trademark identicalness or similarity, the English meaning of the mark should also be subject to its being known to the public or the relevant section of the public. The meaning which is only available in a special dictionary or is not the general meaning of the English word should not be the basis on which the meaning of the trademark in suit is determined (excluding the circumstance in which an English trademark is the generic name of the relevant goods). When determining the meaning of "BEYOND PETRONEUM", the court takes the view that the distinctive part of the trademark is "BEYOND", which means "exceeding"; then, this should also be the meaning known to the public, and the court should compare this meaning with the reference trademarks, and should not compare it with the Chinese meaning corresponding to the plaintiff's trademarks. It is known that while "exceed" and "beyond" both have the meaning of "going beyond", they are somewhat different in the shade of meaning, except the circumstance where there is sufficient evidence proving that the plaintiff's long-time use of the trademark in suit has made it possible for the relevant section of the public to correspond "BEYOND" to the Chinese word "超越".

In determining the Chinese meaning of an English trademark, it should be considered that the English meaning does not fully correspond to the Chinese meaning, and it may be so when the English trademark is a noun in that the public find it easy to associate the meaning of the trademark in a foreign language. Take "crown" for example, the average Chinese consumers who know a little English may directly associate "crown" with the Chinese word "皇冠". In case like this, it is not undue to determine that a "CROWN" trademark is similar to a "皇冠" trademark. However, when an English trademark is a verb, an adjective, a preposition or an adverb, it may have more than are meaning. The distinctive part "BEYOND" of the trademark "BEYOND PETRONEUM" is a preposition and an adverb. Most English propositions have varied meanings and usage. Even if it is used with the "PETROLEUM", the word "BEYOND" does not only have one meaning. The BP defines it as "not contributing petroleum only" on its own website, and its lawyer interprets it as "besides petroleum" and the court understands it as "surpassing petroleum". Without the word "PETROLEUM", "BEYOND" will have too many meanings to be covered by the Chinese word "超出". In its decision, the court does not use the meaning of "BEYOND" best known to the public. It, instead, subjectively takes "超出" as the common meaning of the word "BEYOND". Even so, the court does not compare the Chinese word "超出" with the reference "超越矿业" and "超越". Rather, it further believes that "BEYOND" means "超越", and then make its comparison. This way of the court to determine the meaning of the English trademark is open to question.

Further, determination of identical or similar trademarks are also a process of determining the extent of protection of a prior trademark. The extent of the exclusive right to use a prior trademark should not be indefinitely broadened. If the way is adopted in which the court protects the meaning of the prior trademark in the present case, all the English words "exceed", "outdo", "surmount", "surpass" and "transcend" covered by the meaning of the Chinese word "超出" might be determined as similar to it. Obviously, the determination would render the extent of protection of the prior trademark too broad, and it is unfair to the applicant of the later trademark.

IV. Whether confusion is likely to be created on the part of the relevant section of the public

Another necessary condition to be met for determining trademark similarity is the likelihood of confusion on the part the relevant section of the public about the origin of goods. In other words, if it is unlikely to create confusion on the part of the relevant section of the public about the origin of goods, a trademark does not constitute a similar trademark9 even if it is similar in sound, shape or meaning of the word of the trademark. Here the relevant section of the public refer to consumers and those dealing in the class of goods shown by the trademark.10 The goods in respect of which the trademarks of "BEYOND PETRONEUM" and "超越石油" are used are engine oil, non-chemical additives for automobile and fuel. The TRAB believes that the sellers and consumers of lubricant and engine oil are not limited to the petrochemical industry; average consumers with less distinguishing capability are included. It is relatively more reasonable to define the relevant section of the public of the trademarks of "BEYOND PETRONEUM" and "超越石油".

In determining the presence likelihood of confusion on the part the relevant section of the public, the court does not require the actual presence of confusion, the presence of the likelihood of confusion is sufficient to determine the similarity of a trademark. Confusion comes from association. Only when consumers associate one trademark with another, is the confusion likely. Besides, the likelihood of confusion should be determined on the basis of the average attention of the relevant section of the public.11, 12

However, in the present case, it seems that the court did not determine the trademark similarity on the basis of trademark confusion. As for such a non-noun English trademark as "BEYOND", Chinese consumers pay more attention to the pronunciation of the trademark. For example, the audience from Mainland China do not refer to the renowned "BEYOND" band from Hong Kong as "超越" band or something like it, but directly call it Beyond Board. With English becoming increasingly popular among the Chinese consumers, they often directly read and pronounce English words, and pay no attention to their meaning unless the English word is a very common word of a definite meaning. For example, the plaintiff always uses the English "BEYOND PETRONEUM" trademark on petroleum products, and consumers always associate the trademark with the plaintiff's peritoneum products. Even the absence of any Chinese trademark corresponding to the "BEYOND PETRONEUM" trademark will not, at all, hinder Chinese consumers in the recognition and use of the plaintiff's goods on which the "BEYOND PETRONEUM" trademark is used. Likewise, encountering the "BEYOND PETRONEUM" trademark, Chinese consumers would normally use the English words to refer to it unless the trademark owner has given it a definite Chinese meaning and advertised it among consumers to facilitate consumers to associate the Chinese words with the English words. However, the BP interprets the "BEYOND PETRONEUM" as "not contributing petroleum only", and it has never told the Chinese consumers that the word "BEYOND" of the trademark in suit means "超越" in Chinese, nor have the Chinese consumer associate "BEYOND PETRONEUM" with the word "超越", nor have they associated the "超越" trademark with the plaintiff's petroleum products. Accordingly, this writer believes that consumers will not associate "超越" with the English "BEYOND PETRONEUM" trademark, nor confuse one with the other.

V. Conclusion

This writer believes that, in determining similarity of trademark, particularly between a Chinese trademark and an English one full account should be taken of the sound, shape and meaning of the trademark, and the meaning of an English trademark should not be the only factor to be considered. For Chinese consumers, the sound of most English trademarks is more important. When the English meaning of a trademark is used as dteh basis for determination, it should be subject to the average or relevant section of the public. When determining whether the trademark "BEYOND PETRONEUM" is similar to "超越矿业" and "超越", the court has overemphasised the meaning of the trademark "BEYOND PETRONEUM", without considering the likelihood of confusion on the part of the relevant section of the public. Similarity of trademark determined in this manner has given the prior trademark unnecessary, extended protection and created barrier to the registration of the later trademarks applied for.

The author: Trademark Attorney of the China Patent Agent (H.K.) Ltd.

1 The Trademark Office's Trademark Refusal Notifications Nos. ZC 3244734 BHI and ZC 3244729 BHI.

2 The TRAB's Decision Nos. Shangpingzi 2959 and 2957/2005.

3 The Beijing No. 1 Intermediate People's Court Administrative Ruling Nos. 204 and 205/2005.

4 The Trademark Examination and Adjudication Standards jointly formulated by the Trademark Office of the State Administration for Industry and Commerce and the TRAB in December 2005.

5 The Beijing Higher People's Court's Explanation of Several Issues Relating to Trial of Cases of Civil Dispute over Trademark issued on 18 February 2004.

6 Article 9 of the Interpretation by the Supreme People's Court of Several Issues Relating to Application of Law to Trial of Cases of Civil Disputes over Trademarks passed on 12 October 2002.

7 Article 10 of the Interpretation by the Supreme People's Court of Several Issues Relating to Application of Law to Trial of Cases of Civil Disputes over Trademarks.

8 Huang Hui, Trademark Law, the Publishing House of Law, P.135.

9 This view was established in the case "TEXWOOD and device" v. "苹果". For details see the Beijing Higher People's Court's Administrative Ruling No. Gaoxingzhongzi 405/2005.

10 Article 8 of the Interpretation by the Supreme People's Court of Several Issues Relating to Application of Law to Trial of Cases of Civil Disputes over Trademarks passed on 12 October 2002.

11 Article 10 of the Interpretation by the Supreme People's Court of Several Issues Relating to Application of Law to Trial of Cases of Civil Disputes over Trademarks.

12 The Trademark Examination and Adjudication Standards, Pp. 78-79.