1. Profile

(1) Basic facts

     “Gem Flower” is a well-known trademark of China National Petroleum Corporation (hereinafter referred to as “China National Petroleum Corporation”) on services such as “gas station”, and enjoys a very high reputation. China Kuang (中匡) Petroleum Group (Fujian) Co., Ltd (hereinafter referred to as China Kuang Petroleum (中匡石油)) deliberately applied for “China Kuang (中匡) Petroleum” as the name of the company, which is very similar to “China (中国) Petroleum”, in order to achieve the purpose of being a famous brand, and 

and imitated PetroChina’s   to apply for the registration of the disputed trademark  . In actual uses, the color scheme of upper yellow and lower red was imitated, i.e.    . PetroChina filed an invalidation, and the CNIPA invalidated the disputed trademark on the grounds of similarity. The China Kuang (中匡) Petroleum refused to accept the ruling of the CNIPA and filed a lawsuit with the Beijing Intellectual Property Court to revoke the ruling of the CNIPA, and PetroChina participated in the lawsuit as a third party. The court held that the graphic parts of the disputed trademark and the cited trademarks are highly similar in terms of constituent elements, composition style, and overall visual effect, and constitute similarity in the logo. The registration of the disputed trademark constituted “similar trademarks used on the same or similar service” in Article 28 of the Trademark Law before the revision, and China Kuang (中匡) Petroleum’s litigation request was rejected. 

(2) Focus of Dispute

      whether the disputed trademark No. 11755200   and the first cited trademark No. 4360583  , and the second cited trademark No. 942664  constitute similar signs; and whether the disputed trademark and the first and second cited trademarks constitute similar trademarks used on the same or similar goods

(3) Results of judgment

      The trademark in dispute is a decimated upper yellow and lower ruby flower pattern with line segments distributed to the lower left and lower right inside. The cited trademark one is composed of seven line segments from the bottom left to the bottom right, which are distributed in ten equal parts of the upper yellow and lower ruby flower pattern and the Chinese character “China Petroleum (中国石油)”. The second trademark is the seven-line segment decimated upper yellow and lower ruby flower pattern distributed from the lower left to the lower right. The first and second cited trademarks are registered first. The disputed trademark and the graphic parts of the first and second cited trademarks are highly similar in terms of constituent elements, composition style and overall visual effects, which constitute similarity in the logo. The plaintiff claimed that the disputed trademark had been used and promoted to have a certain degree of popularity to identify the source of the goods, and the evidence provided by it was insufficient to prove that the disputed trademark and the cited trademarks could be distinguished in the market. Therefore, the court determined that the disputed trademark and the first and second cited trademarks constituted “similar trademarks used on the same or similar services” in Article 28 of the Trademark Law before the revision and should be declared invalid. 

2. Case Analysis

      The application for registration and use of the “Putian series” trademark is hard to prevent for well-known companies. Criminals obtain trademark registration through various similar applications for prominent use, split applications for combined use and other means, and continue to actively move closer to well-known trademarks in actual use, which not only infringes on the brand reputation of well-known companies, but also damages the legitimate rights and interests of consumers. This requires companies to pay attention to their own brand building and brand management. Enterprises should not only crack down on similar trademarks from the source and actively file opposition and invalidation procedures against similar trademarks, but pay attention to the behavior of others imitating in actual use and protect trademark rights through industrial and commercial complaints and trademark infringement as well. In the current environment of strictly regulating trademark applications and combating malicious registration, malicious applications and imitations by others have gradually been eliminated. Enterprises should operate in good faith, actively defend their rights, and continue to accumulate their own brand value, forming a good cycle for consumption and providing the consumers with high-quality goods and services.

3. Lawyer’s Comments

       When judging similar trademarks, the “probability of confusion” should be used as the criterion. The possibility of confusion can be determined with reference to factors such as the similarity of the trademark logo, the relevance of the use of goods or services, the distinctiveness and popularity of the trademark, and the subjective maliciousness of the applicant. In this case, the trademark in dispute and the quotation mark are similar in themselves. In order to strengthen the judge’s free judgment, the agent in this case submitted a large amount of evidence on the popularity of the cited trademark. Regarding the malicious evidence of China Kuang Petroleum, the name of its applicant enterprise “Fujian Shenguo (申国) Petroleum Co., Ltd” is an example. It also imitates a third party’s prior well-known trademarks “China Petroleum (中国石油), Kunlun Hospitality (昆仑好客), PetroChina (中石油),,” to apply for registrations “China Kuang (中匡石油) Petroleum, Zhongyu Hospitality (中囵好客), Zhongsi Petroleum (中四石油) and other trademark archives. More importantly, after searching by the agent in this case, the plaintiff objectively caused confusion among the relevant public during the actual use of the disputed trademark. For example, reports of the media such as Baidu Tieba and Sohu have confirmed this. In the end, the court accepted the evidence submitted by the third party, determining that the disputed trademark constituted the 28th provision of the Trademark Law and declaring it invalid.