By King & Wood’s Trademark Practice
Nokia opposed a trademark application to register "VERTU" under Appn. No. 3084613 which covered "spectacles [optics]; eyeglass cases, etc." in Class 9 filed by an individual. Both the China Trademark Office ("CTMO") and Trademark Review and Adjudication Board ("TRAB") denied the opposition. Nokia appealed before the Beijing First Intermediate People’s Court asserting that:
1) Since Nokia is a world-famous mobile phone manufacturer, "VERTU" is the first luxury brand for mobile phones and has a reputation among the consumers;
2) Nokia has secured the registration for "VERTU" covering "calculators" in Class 9; and
3) The third party applied for the "VERTU" mark for "spectacles" in Class 9 in bad faith. It would easily cause confusion in the public and damage the interests of Nokia.
The TRAB argued that Nokia had no evidence to prove that its "VERTU" mobile phone had acquired a relatively high recognition in China before the filing of the opposed mark on January 30, 2002.
The Court, after hearing, held that, according to article 11 of the Interpretation on Several Issues Concerning the Application of Laws in Trying Civil Cases Related to Trademark Disputes, similar goods refers to the goods that are identical with respect to their function, usage, industry, sales channels and target consumers; or goods that are likely to lead the relevant public into thinking they are related to each other and cause confusion. When judging whether goods or services are similar, the People’s Court shall make its judgment based on the average knowledge of the public pertaining to the goods or services. In this case, the opposed mark is being used on designated goods which are different in industry, manufacturing technique, function, usage, and sales channels, from the goods in respect of which the cited mark is used. Nor does the use of the opposed mark lead the relevant public to believe that such goods are related to the goods on which the cited mark is used or cause confusion. Thus, the goods in respect of which the opposed mark is used do not constitute similar goods as prescribed by law. Nokia had no factual or legal grounds to prove that the aforesaid goods are similar with each other. Therefore the court holds, given the similarity between the opposed mark and the cited marks, the opposed mark does not constitute similar mark with the cited mark because it is used on different designated goods. The Beijing First Intermediate People’s Court thus ruled against Nokia and sustained the TRAB’s decision.
After the court delivering the judgment, neither party appealed. The judgment has now come into effect.