Guide: Judgment of whether trademarks are similar or not should not base only on the similarity of constituent elements of trademarks.

Introduction:

Tokyu Corporation plans to register its English trade name “TOKYU” in various categories; however, due to the existence of a prior trademark of “TOKYO2020 and the figure of five rings”, a trademark related to Tokyo Olympic Games in 2020, part of the application of trademark registration of Tokyu Corporation was rejected. We submitted a request for review of the refused trademark out of dissatisfaction, but the Trademark Review and Adjudication Board sustained the decision of refusal. We filed an administrative suit to the Beijing First Intermediate People's Court and argued that judgment of whether trademarks are similar or not should not base only on the similarity of constituent elements of trademarks; instead, the fundamental standard for the judgment should be whether or not confusion or misidentification would be caused. The Beijing First Intermediate People's Court didn’t support our arguments, and we further appealed to the Beijing’s High People’s Court. Eventually, the court of second-instance accepted our arguments and revoked the first-instance judgment and the refusal of the trademark. As a result, the trademark of Tokyu Corporation was successfully registered.

Highlight of the case:

The trademark “TOKYU” that applied for registration does have similarities with the reference trademark “TOKYO2020 and the figure of five rings” in their English constituents. However, the reference trademark also contains “2020” and the figure of Olympic rings. The figure of Olympic rings graphics can be distinctly identified due to its high popularity among relevant public of China, and TOKYO is the English name of the capital of Japan. Together with 2020, the reference trademark can be easily identified as in connection with the Tokyo Olympic Games in 2020, therefore confusion with the trademark applying for registration would not be caused.