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Influence of Correspondence of Chinese Character and Foreign Words on Determination of Trademark Similarity

02

NOV

2020

Foreign enterprises usually use their original foreign trademarks to gain the brand awareness in the early stage of their entering in China. With further development of brand protection and cultural exchanges, foreign enterprises have also followed the local custom and have increasingly applied for registration of Chinese-character trademarks in order to draw the attention of Chinese consumers more quickly and conveniently. At the same time, owners of foreign brands suddenly find that the Chinese-character trademarks frequently used by Chinese media in reporting their brands have been pre-emptive registered by others in advance. Consequently, trademark disputes caused by the corresponding Chinese translation and foreign brands are on the rise.

LITTLESTAR SERVICES LIMITED (hereinafter referred to as "LITTLESTAR") is responsible for brand protection and publicity of the world-renowned musical “Mamma Mia!”. This musical had its premiere in London’s west end Prince Edward Theatre as early as in 1999 and launched its first show in English in China in 2007. It had ignited enormous enthusiasm among musical fans. Since 2011, a Chinese tour production of Mamma Mia! has 408 performances in 24 cities across the country, attracting more than 600 thousand Chinese audiences and breaking many records. So far it has become an important milestone in China's musical circle.

A Chinese company Shanghai Entertainment Team Media Group (hereinafter referred to as "SETMG") applied for registration of trademark No. 12511357 "" (“Chinese characters of Mamma Mia, SUPER DIVA”, hereinafter referred to as "the opposed mark") in 2013. It designated the services "organization of shows [impresario services], production of shows, entertainer services, presentation of live performances, etc.” in Class 41. LITTLESTAR filed an opposition against it before the China National Intellectual Property Administration ("CNIPA") on May 26, 2016 as it considered that the opposed mark constitutes a confusingly similar trademark to its prior trademark Reg. No. 6925356 "" in class 41 covering "organization of shows [impresario services]; arranging and conducting of music concerts; film production; production of shows; radio entertainment; radio and television programmes (production of) etc.". The CNIPA made a decision of (2017) Trademark Yi Zi No. 0000043852 to reject registration of the opposed mark on part of designated services. SETMG was dissatisfied with the decision and filed a review application on partial rejection with CNIPA. As the case was pending in the review procedure, SETMG repeatedly applied for registration of other trademarks containing such words as "妈妈咪呀(Chinese characters of Mamma Mia)" in Class 41 and related classes, such as trademarks "妈妈咪呀(Chinese characters of Mamma Mia)" under No. 14841090, No. 25097302, No. 36152527, trademarks "妈妈咪呀(Chinese characters of Mamma Mia) SUPER DIVA" under No. 25881324, No. 36164078, etc. LITTLESTAR spared no effort to crack down the above trademark applications. In order to fully protect the corresponding Chinese-character trademark of its core brand. LITTLESTAR also applied for registration of the Chinese trademark "妈妈咪呀!(Chinese characters of Mamma Mia)".

In the actions against SETMG’s trademarks, LITTLESTAR collected and submitted a large amount of news reports about its core brand from Chinese media in several procedures of opposition, review on rejection by opposition and invalidation to prove that its cited mark "MAMMA MIA!" was in prior use on the “shows” related services and had accumulated a certain reputation before the filing dates of SETMG’s applications. Besides, a corresponding connection between the cited mark and its Chinese-character mark had been established and known to the related public. As a result, the CNIPA made decisions in Shang Ping Zi [2018] No. 0000036906, (2019) Trademark Yi Zi No. 0000045269, (2019) Trademark Yi Zi No. 0000065187 and held that SETMG’s applications for "妈妈咪呀(Chinese characters of Mamma Mia)" corresponded to LITTLESTAR’s cited mark "MAMMA MIA!" in terms of pronunciation and did not create a new different meaning. They constituted similar marks on the same or similar services and are likely to cause confusion among the related public as to the origin of services.

Generally speaking, there are mainly two ways to translate a foreign trademark: transliteration based on pronunciation and translation based on meaning. But both may have uncertainties. When it comes to the determination of similarity between a Chinese-character trademark and a foreign-language trademark, the following factors shall be considered: the composing elements of the marks, whether there is a sole corresponding connection between the marks, the degree of corresponding relationship between the marks, and the likelihood of confusion or misunderstanding about the origin of goods or services caused among the related public under general attention. Take an English word as example, it does not necessarily have and only have a unique corresponding Chinese characters or words. On the contrary, a Chinese character or phrase may be translated into different English words. An English mark sometimes has meanings in Chinese and sometimes does not. After long-time and wide-range promotion and use, a corresponding Chinese mark may be recognized by the related public and has established a fixed and sole correspondence with the original foreign mark and accumulated certain reputation in China. Since the ordinary customers in China generally do not have a habit to translate a foreign mark and then identify and memorize its Chinese equivalent, Chinese transliteration is more popular than Chinese translation of a foreign mark among the public.

For example, in the administrative litigation case of review on refusal of trademark App. No. 11041964 "小黑裙(meaning Little Black Dress)"[1], Beijing Intellectual Property Court held that the trademark did not constitute a similar trademark to the cited mark International Registration No.1116358 "LA PETITE ROBE NOIRE". Although the cited mark can be translated into “Little Black Dress” in Chinese, it is composed of French words which are unlikely to be identified by the Chinese public who basically do not recognize foreign language other than English. Thus consumers identify the cited mark as a combination of foreign words and do not connect it with the Chinese version "小黑裙(meaning Little Black Dress)" . In another administrative litigation case of review on opposition of trademark App. No. 4193634 "宝玑 (BAO JI, a Chinese version of BREGUET") [2] , the former Trademark Review and Adjudication Board (now CNIPA), the courts of first instance and second instance all held that although words of the opposed mark No. 4193634 "宝玑 (BAO JI, a Chinese version of BREGUET)" and the cited trademark "BREGUET" are different in letter composition, the evidence on record proved that "BREGUET" had already become a world famous brand in the clocks and watches industry and enjoyed a high reputation in China prior to the application date of the opposed mark. The Chinese mark "宝玑 (BAO JI, a Chinese version of BREGUET)" used mainly as a Chinese equivalent of the cited mark “BREGUET” was widely accepted by the Chinese consumers and had established a steady corresponding relationship with the cited mark “BREGUET”. So the decisions confirmed the similarity between the opposed mark and the cited mark. The different results of the above two cases just demonstrate that the corresponding relationship plays an important role in determining similarity between the Chinese mark and foreign mark.

To sum up, LITTLESTAR's experience in safeguarding its legitimate rights and interests also reminds foreign brand owners that when entering Chinese market, it would be best to apply for registration of their foreign trademarks and corresponding Chinese trademarks at the same time if budget permitting. A great corresponding Chinese trademark will help Chinese consumers easily identify, memorize and spread the foreign brand. Besides, it will give the brand new meanings and show the brand owners’ understanding of Chinese culture and good preparation for entering the Chinese market. Failure to register a corresponding Chinese mark that has been advertised and promoted for long time in China may result in preemption of the mark by others, risk of infringement of others’ mark and even unavoidable change of the Chinese mark.

Bibliographies:

[1] Beijing Intellectual Property Court (2014) Jing Zhi Xing Chu Zi No. 168

[2] Shang Ping Zi (2012) No. 28136

(2013) Yi Zhong Zhi Xing Chu Zi No. 274 administrative judgment of Beijing First Intermediate People's Court

(2014) Gao Xing Zhong Zi No. 1544 of Beijing High People's Court

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