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Determining whether a Chinese mark and a foreign mark are equivalent marks

2015.02.13

The test for determining whether a Chinese mark and a foreign mark are equivalent trademarks is best illustrated by a case involving Canon Inc.


Canon Inc. (popularly known in China as “佳能”, pronounced as “Jianeng”) was granted registration for its trademark “Canon” for use in Class 9 products (cables, wires, batteries, etc.) in 1987, without however applying for the registration of  “佳能” for such category.


Many years later, the company Guangdong Jiali Industrial Co., Ltd. (“Jiali”) sought to register the mark “佳能” for use also in products under Class 9. Canon Inc. thereafter filed an opposition, but eventually the Trademark Office (TMO) gave way to the examination and approval of Jiali’s trademark application. When Canon Inc. questioned the TMO’s ruling before the Trademark Review and Adjudication Board (TRAB), the latter, ruling in favor of Canon held that the marks “佳能” and “Canon” have become synonymous to each other, and that the mark “佳能 Canon” had already gained a high degree of fame, and therefore if Jiali’s application were to be granted on the same class of goods, such could cause confusion among consumers.


Unrelenting, Jiali brought the matter before the court. Both the first and second instance courts ruled in favor of Canon Inc. holding that the marks “佳能” and “Canon” are equivalent marks. More importantly, the court provided the basis by which the two marks were determined to be equivalents: the test is to determine whether or not there exists as between the two marks some form of connection or correspondence, and the degree of such connection or correspondence.


It is not enough that a Chinese mark is a transliteration or translation of a foreign mark for the two to be regarded as equivalents to each other. One must establish that, through its long-term use and publicity, the two marks have gained a high-degree of fame among Chinese consumers to the point that the latter will immediately associate the Chinese mark with the other, under the knowledge that both marks belong to one and the same owner. This is of course ascertained through the evidence adduced by each party.


In the case, Canon Inc. was able to adduce sufficient evidence that the mark “Canon” has been used and publicized for a long time by Canon Inc. in China thereby already enjoying well-known status, and furthermore, that such mark has become synonymous already with “佳能” (the name by which Canon Inc. is known in the Chinese language), and therefore the two marks can already be regarded as equivalent to each other. Jiali on the other hand was unable to adduce sufficient evidence that, through its use of and publicity over the mark “佳能”, it had attained a degree of fame enough to enable consumers to distinguish its products from those of Canon Inc.


Given the foregoing, if Jiali is allowed to use mark “佳能” for a class of goods for which the mark “Canon” is registered, such would likely lead consumers into believing that its products originate from Canon Inc., thereby causing confusion as to the origin of the goods.