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Viewpoint | Analysis of the Determination of Similar Goods in Trademark Infringement Cases

Published:

2024-01-02

The determination of similar goods, as an important component of determining whether to infringe in trademark infringement cases, has been a matter of concern and controversy. The purpose of this paper is to analyze the problem one by one by discussing the legal provisions and related cases.

1. what is the same commodity

The same kind of commodity refers to the commodity whose name actually produced and sold by the suspected infringer is the same as the commodity name approved for use by another person's registered trademark, or the two commodity names are different but are the same or basically the same in terms of function, purpose, main raw material, production department, consumer object, sales channel, etc., The relevant public generally considers it to be the same kind of commodity (Trademark Infringement Judgment Standard issued by the State Intellectual Property Office in 2020).

In practice, we often encounter commodities with different names but referring to the same thing in cases. In this regard, Article 5 of the Opinions of the Ministry of Public Security of the Supreme People's Court, the Supreme People's Procuratorate on Several Issues Concerning the Application of Law in Handling Criminal Cases of Infringement of Intellectual Property Rights (Fa [2011] No. 3) states:

(1) Commodities with the same name and commodities with different names but referring to the same thing may be considered as "the same commodity". "Name" refers to the name used by the Trademark Office of the State Administration for Industry and Commerce for goods in the work of trademark registration, usually the name of the goods specified in the International Classification of Goods and Services for Trademark Registration. "Commodities with different names but referring to the same thing" refer to commodities that are the same or basically the same in terms of functions, uses, main raw materials, consumption objects, sales channels, etc., and are generally considered by the relevant public to be the same thing.

(2) The determination of "the same kind of goods" shall be compared between the goods approved for use by the registered trademark of the right holder and the goods actually produced and sold by the actor.

The concept of 2. similar goods and how to determine.

Similar goods are goods that are the same in terms of function, use, production sector, sales channels, consumer objects, etc., or are generally considered by the relevant public to have specific connections and are easily confused.

Judgment of (I) similar goods

Basis for objectivity: Table of Differentiation of Similar Goods and Services (States members of the Nice Union, using the International Classification of Goods and Services for the Registration of Trademarks (the Nice Classification). The current Nice classification divides goods and services into 45 categories, of which goods are 1 to 34 categories and services are 35 to 45 categories. The Trademark Office divides the goods and services classified by Nice into similar groups, and adds the names of commonly used goods and services in China in the light of the actual situation, and formulates the "Classification Table of Similar Goods and Services"). In principle, goods in different groups do not belong to similar goods, but the distinction table specifies whether the goods are similar by adding notes, for example, industrial chemicals in the first 0104 group constitute similar goods with all goods in the group.

Subjective judgment: in accordance with the Interpretation of Several Issues Concerning the Application of Law in the Trial of Trademark Civil Dispute Cases

Article 11: The similar goods specified in Item (I) of Article 52 of the Trademark Law refer to the same in terms of function, use, production department, sales channel, consumer target, etc., or the relevant public generally believes that they have specific connections and are easy to cause Confused goods.

Article 12 In accordance with the provisions of Item (I) of Article 52 of the Trademark Law, the people's court shall determine whether goods or services are similar, and shall make a comprehensive judgment based on the general understanding of the relevant public on the goods or services; the International Classification of Goods and Services for Trademark Registration and the Classification of Similar Goods and Services can be used as a reference for judging similar goods or services. For example, in the case of Jinan Company A v. Jiangsu Company B over trademark infringement, the court of first instance held that the alleged infringing product in this case was a cylinder liner classified into Category 7 in the "List of Similar Goods and Services", and the goods approved for use by the plaintiff's registered trademark were classified into Category 12. The two were in different similar groups, but the goods approved for use by the plaintiff's registered trademark included auto parts, there is a high degree of correlation and overlap with the cylinder liner involved in the case in terms of function, use, production department, sales channels, etc. The relevant public generally believes that there is a specific connection, which can easily lead to confusion and can be identified as similar goods.

Another example is the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce, Shang Ping Zi (2013) No. 111006, "On No. 5510807" Valeo and Figure "Trademark Objection Review Ruling. It is believed that the industrial oil, lubricating oil, lubricating grease, fuel and other commodities designated for use by the trademark 5510807" Valeo and map "that have been objected to are necessary maintenance supplies and necessary supporting products to ensure normal use of transmission devices, motors and engine starters (for vehicles), engines and other commodities approved for use by the cited trademark. They are highly related in terms of functional use, sales channels, consumer objects and other aspects and constitute similar commodities.

Accordingly, the determination of whether a commodity is a similar commodity should be based on whether it can cause relevant public confusion, and the Classification Table is used as a reference only. The basis for judgment should be the same in terms of function, purpose, production sector, sales channel, consumer target, etc., or the relevant public generally believes that there is a specific connection.

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