[author: Hongg Chong]
The determination of similar goods, as a constituent element in determining whether infringement exists in trademark infringement cases, has consistently garnered significant attention, and remains a contentious issue. This article aims to provide a brief analysis and discussion of this issue through relevant legal provisions and typical cases.
- Contrasts and Comparisons in Determining Similar Goods in Trademark Authorization Procedures and Trademark Infringement Litigation
In accordance with Article 11 of the Interpretation of the Supreme People’s Court on the Application of Laws in the Trial of Civil Disputes of Trademarks (2020 Revision), it states: “The similar goods, as stipulated in Article 57(2) of the Chinese Trademark Law, refer to goods with identical functions, uses, production sectors, sales channels, and target consumers, or goods that the relevant public generally believes have specific connections and are likely to cause confusion. The similar services refer to services with identical purposes, content, methods, and target consumers, or services that the relevant public generally believes have specific connections and are likely to cause confusion. The similarity of goods and services means that the goods or services are related to one another in a particular manner and are likely to cause confusion among the relevant public.”
According to the provisions of the Trademark Examination and Trial Guide, “similar goods refer to goods that are identical or closely related in function, use, production sector, sales channels, and target consumers. Similar services refer to services that are identical or closely related in purpose, content, method, and target consumers. The similarity between goods and services indicates a significant correlation between them.”
Based on the aforementioned provisions, there exist discrepancies in the definitions of similar goods between the two documents. The judicial interpretation tends to prioritize the real-life usage and the potential for confusion among the relevant public, while the Trademark Examination and Trial Guide places greater emphasis on objective standards, primarily focusing on the inherent attributes of the goods rather than confusion as the primary consideration.
- Inferences on Determination Rules for Similar Goods from Trademark Infringement Cases
2.1 The Role and Positioning of the Classification Table in Determining Similarity of Goods
In the cases concerning the authorization and determination of trademark rights, the Trademark Office primarily relies on the International Classification of Goods and Services (the Nice Classification) and the Chinese Classification of Similar Goods and Services to determine similar goods. However, according to Article 12 of the aforementioned judicial interpretation, courts, in accordance with Article 57(2) of the Trademark Law, determine whether goods or services are similar based on the general understanding of the relevant public towards the goods or services. The Nice Classification and the Chinese Classification of Similar Goods and Services may serve as references in judging similar goods or services. From the above judicial interpretation, it can be seen that in trademark infringement cases, when determining whether the accused infringing products constitute similar goods to the designated goods of the plaintiff’s registered trademark, the classification table is only for reference and not an absolute standard. Therefore, in judicial practice, situations often arise where the classification table is surpassed. This means that even if goods do not constitute similar goods according to the classification table, they may still be determined to be identical or similar in infringement cases. Additionally, goods and services may also be determined to be similar. The following analysis and discussion will be based on some typical cases.
2.2 Determination of Similarity Between Goods
In some cases, the products accused of infringing do not appear similar to the designated goods of the registered trademark involved, as per the classification table. For example, in the trademark infringement dispute between Ulthera, Inc. and Guangzhou Kepai Industrial Co., Ltd.①, the designated goods of the registered trademark in question belong to Class 10. However, the accused infringing product, the ultrasonic scalpel, does not fall under the goods listed in Class 10. Nevertheless, the court of second instance deemed that, through an analysis of function, use, sales channels, and consumer groups of the products, the Ulthera ultrasonic scalpel from Ulthera, Inc. is primarily used as an ultrasound therapy device for tightening specific areas of the skin, mainly targeting the treatment of facial wrinkles. Its primary sales channels and consumer groups are within the medical aesthetics industry. The accused infringing ultrasonic scalpel serves as a beauty device, with its sales channels primarily targeting practitioners in the beauty industry. Guangzhou Kepai Industrial Co., Ltd. also promotes the accused infringing product at beauty expos held in Guangzhou and Shanghai. It can be seen that there are overlaps between the accused infringing products and the designated goods of the registered trademark in terms of consumer and service targets. This could easily lead the relevant public to believe that the goods and services are provided by the same entity or have specific connections between providers. Therefore, it was determined that the accused infringing products and the designated goods of the registered trademark are the same goods.
In other cases, there may be disputes over which class the accused infringing products should belong to, but it does not affect the court’s determination on similarity. For example, in the “味动力” (pronounced as “Wei Dong Li”) trademark infringement case②, the court of second instance held that the accused infringing products, labeled as lactic acid bacteria drinks, are considered dairy-containing beverages in terms of function and use, despite differing in the proportion of milk. These products are deemed similar to the designated goods “milk beverages, milk predominating” of the registered trademark “味动力” by Hubei Junyao Healthy Beverage Co., Ltd. The court further noted that the similar sales channels, locations and target consumers could easily lead to confusion among the relevant public. Therefore, the accused infringing products and the designated goods of the registered trademark “味动力” are considered similar goods. Whether the accused infringing products should be classified under Class 32 or Class 29 in the Classification of Similar Goods and Services does not affect the determination of their similarity.
In the aforementioned cases, although the accused infringing products are not explicitly classified within a specific class in the classification table, the court can still compare the actual characteristics of the products with the designated goods of the registered trademark involved, in order to make a determination of similarity.
2.3 Determination of Similarity Between Goods and Services
In trademark infringement cases, besides the possibility of breaking through the Classification of Similar Goods and Services to determine the similarity between goods, if there exists a specific connection between goods and services that could easily confuse the relevant public, it can also be deemed as similar. Determining whether goods and services are similar should also be based on the general understanding of the relevant public towards the goods or services.
For example, in the “参考消息” (pronounced as “Can Kao Xiao Xi”) trademark infringement case③, the court considered that the judicial review of whether goods or services are similar in infringement litigation is different from the administrative review at the trademark examination and approval stage, and also different from the specific classification of goods in the administrative management process. Whether goods or services are similar is not an isolated and static issue. In the judicial review of whether goods or services are similar in infringement litigation, factors such as the purpose, content, method, and target consumers should be compared and considered. If these aspects are identical or if the relevant public generally perceives a specific connection, which could easily lead to confusion, then it can be determined as similar goods or services.
In this case, the plaintiff Reference News (as known as “参考消息 (Can Kao Xiao Xi)” in Chinese) is a political newspaper that provides political news and financial information to the relevant public, while the defendant provides “参考消息” mobile app download services and related political news and financial information browsing services through its operated website. Although the promotional channels of the plaintiff’s newspaper and the defendant’s website are different, their promotional content is similar, and the consumer groups are related. In the contemporary media environment, where major media outlets disseminate news and financial information via both traditional print media and internet platforms, the defendant’s provision of software download services and related information browsing services utilizing the widely recognized registered trademark “参考消息” easily leads the relevant public to believe that the software services and information browsing services are provided by or associated with the plaintiff, thereby causing confusion among the relevant public regarding the origin of the political news and financial information therein.
Therefore, the services provided by the defendant using the disputed trademark are similar to the designated goods of the plaintiff’s registered trademark “参考消息”, and the defendant has infringed upon the plaintiff’s exclusive right of trademark “参考消息” on the goods “newspapers” in Class 16.
2.4 Influence of Reputation of Cited Trademark on Determining Similarity of Goods
According to Article 6 of the Supreme People’s Court’s Opinions on Several Issues concerning Intellectual Property Trials Serving the Overall Objective under the Current Economic Situation, it states: “The determination of commodity similarity or trademark similarity requires the consideration of the extent of distinctiveness and market popularity of registered trademarks for which protection is sought. We shall give protection with a wider scope and a greater intensity to the registered trademarks which are more distinctive and more popular in the market, so as to stimulate the winners in market competition, purify the market environment and curb improper ‘hitch-hiking’ and imitation acts.” From this provision, it can be observed that the higher the reputation of the cited trademark, the more lenient the standard for judging the similarity of goods, meaning that the accused infringing products are more likely to be deemed similar to the designated goods of the cited trademark.
For example, in the “三元” (pronounced as “San Yuan”) trademark infringement case④, Beijing Sanyuan Foods Co.,Ltd. (hereinafter referred to as “Sanyuan Company”) sought protection for their registered trademark “三元 SANYUAN and design”, with designated goods including “milk, powdered milk, powdered eggs, etc.” in Class 29. The accused infringing products are “oatmeal and oat-based food”, which belong to Class 30 according to the classification table. However, the court of second instance determined that both are food products, targeting general consumers, with the function and use of providing convenient, quick, and nutritious foods to consumers. They are both distributed through supermarkets, malls, and other market entities. Therefore, there is an overlap and intersection in terms of manufacturers, sales channels, and consumer groups, indicating a strong correlation. Additionally, consideration must be given to the distinctiveness and reputation of the involved registered trademark of Sanyuan Company. The evidence in the case can prove that Sanyuan Company’s involved registered trademark has strong distinctiveness and high reputation. Therefore, if Jinmei Company uses a mark similar to the involved registered trademark on the accused infringing products, it could easily lead the relevant public to believe that the accused infringing products and the designated goods of the involved registered trademark are provided by the same entity, or that there is a specific connection between their providers. In view of this, the court of second instance determined that the accused infringing products, oatmeal and oat-based food, are similar to the designated goods of Sanyuan Company’s involved registered trademark, which includes “milk, powdered milk, powdered eggs, etc.”
- Conclusion and Recommendations
In summary, in trademark infringement cases, although the Nice Classification and the Chinese Classification of Similar Goods and Services are important references in determining whether goods are identical or similar, the essence of the judgment lies in whether it is easy to “cause confusion among the relevant public”. In other words, the key is to determine whether the relevant public would confuse the origin of the goods or the relationship between the companies producing the goods.
Determining similar goods should follow two principles: Firstly, on a case-by-case basis. The determination of similar goods must be based on the specific characteristics of the goods involved in the particular case, such as their functions, uses, sales channels, etc. It should not be mechanically based on the classification table. Moreover, the classes of goods and services in the classification table are continuously revised and improved in line with market changes. Therefore, the determination of similar goods is not fixed and should also be adjusted according to the development of the market. Secondly, it should be based on the general perception of the relevant public. Article 8 of the Interpretation of the Supreme People’s Court on the Application of Laws in the Trial of Civil Disputes of Trademarks stipulates: “The relevant public under the Trademark Law shall refer to the relevant consumers of a goods or service indicated by a trademark and other traders closely related to the marketing of said goods or service.” It can be seen that the relevant public is divided into two categories. One category is consumers, which includes both potential consumers of the goods and actual consumers. The other category consists of manufacturers, agents, wholesalers, retailers, and so on, who are involved in the marketing activities related to the goods.
In trademark infringement cases, the determination of similar goods is more case-specific compared to cases involving trademark authorization and confirmation. Business operators should not assume that applying for a trademark for a certain product or service in a specific class ensures perpetual protection. They should consider the functional characteristics of the product or service from the perspective of consumers and register in all relevant classes. This helps avoid others from registering similar trademarks in related classes, thereby reducing the risk of infringement.
① Civil Judgment No. 2442 [2020], Final, Civil, 73, Guangdong
② Civil Judgment No. 492 [2020], Final, Civil, Jiangsu
③ Civil Judgment No. 1222 [2014], First, Civil, Fuzhou
④ Civil Judgment No. 402 [2015], Final, Civil, III, Guangdong
