【Brief】
HASTENS SANGAR AB (“HASTENS”) filed an invalidation request against the trademark No. 9758664 in class 25. The former Trademark Review and Adjudication Board of the State Administration for Industry and Commerce ("TRAB") issued a decision on invalidation request Shang Ping Zi [2018] No. 79992, finding that the disputed trademark and the cited trademarks do not constitute similar trademarks used on similar goods or services, and thus maintaining the disputed trademark. HASTENS was dissatisfied and appealed. Both the Beijing Intellectual Property Court and the Beijing High People's Court upheld the decision of the TRAB. After retrial, the Supreme People's Court made a judgment on June 28, 2022, holding that the disputed trademark used on goods in class 25 such as "clothing" constituted a similar trademark used on similar goods to the cited trademarks "海丝腾" and "Hastens" used on goods in class 24 such as "fabric", and violated Article 30 of the Trademark Law and should be declared invalid in accordance with the law. The first and second instance judgments and the decision of the TRAB were subsequently revoked.
【Reasoning】
When deciding whether the coexistence of two marks would cause confusion and misleading, the following factors shall be considered comprehensively: the degree of similarity between the two marks, the degree of similarity between the goods, the distinctiveness and reputation of the cited mark, the attention of relevant public, the intention of the application for trademark registration, and any fact of actual confusion. In this case, the cited trademarks "海丝腾" and "HASTENS" are composed of fabricated words or letters without fixed meanings, and are rather distinctive as trademarks. The disputed trademark is composed of Chinese characters "海丝腾" and "HASTENS" one above the other, which are identical to the relevant elements of the cited trademarks. Although there are differences in functionality and usage between the goods such as "clothing and hats" approved to be used on by the disputed trademark and the goods such as "fabrics and textile fabrics" used on by the cited trademarks, the raw materials for "clothing and hats" are usually textile fabrics, and there is certain connection between the two kinds of goods. Taking into account the similarity between the disputed trademark and the cited trademarks, the relevance of the goods, and the distinctiveness of the cited trademarks, the coexistence of the disputed trademark and the cited trademarks in the market can easily lead the relevant public to mistakenly believe that there is certain connection between the goods providers.
