This is an invalidation case, in which the China National Intellectual Property Administration (CNIPA) made a breakthrough in determining whether the goods are similar between Class 22 and 23. It determined the similarity exists between the designated good in Class 23 of the Disputed Mark and the designated good "textile fiber raw materials, etc." in Class 22 of the Cited Mark. While determining the degree of similarity, the CNIPA comprehensively considered many factors, including the awareness of the applicant’s prior trademarks and the relevance of the products.

Given the fact that the applicant, in this case, does not have the prior trademark rights in Class 23, we carefully analysed the case after receiving the instructions to file the invalidation. Then, we strategically emphasized that the high relevance of the designated goods of the two parties' trademarks and the reputation of the applicant's "THINSULATE" brand in the grounds of invalidation. Eventually, we succeeded in persuading the CNIPA to make a favourable invalidation decision.

I. BACKGROUND

The respondent, Suzhou Bo Nuan Yu Han Technology Co., Ltd., maliciously registered the "THINSULATION TECH" trademark, which is confusingly similar to 3M company's "THINSULATE" trademark. The respondent filed the Disputed Mark with the malicious intention of inducing consumers to purchase it by mistake.

On behalf of 3M Company, we filed an invalidation against the Disputed Mark in March 2020. The CNIPA issued an invalidation decision on January 19, 2021, and invalidated the Disputed Mark in class 23. The client is satisfied with the result.

II. DIFFICULTIES

III. STRATEGIES

Due to the disputes and the difficulties, in this case, we made the following strategies:

IV. SIGNIFICANCE

In determining the issue of whether the goods in Class 22 and 23 constitute similar goods, the CNIPA comprehensively considered the relevance of the products and the reputation of the applicant’s prior trademarks, then made a breakthrough in cross-class protection.

The CNIPA determines as below:

"The designated products of the Disputed Mark, namely artificial threads and yarns, and the designated products of the Cited Marks 1&2, namely textile fiber raw materials and textile fibers, are related to a certain extent in terms of consumers, distribution channels, functional purposes and so on. The evidence 2-5 submitted by the applicant include "THINSULATE" product brochures, brand advertisements, winter clothing design guidelines, brand promotional materials, media reports, product series introductions, which can prove that the applicant's "THINSULATE" trademark is used and acquired a certain fame through using the Cited Marks 1&2 on textile fiber raw materials, textile fibers and other products. The situation that Disputed Mark and the Cited Mark 1&2 coexist on the above-mentioned similar goods, makes it easy for the relevant public to associate the Disputed Mark with Cited Mark 1&2, and to believe that the goods of the above-mentioned trademarks originate from the same business entity or the providers of the goods have a specific connection. Eventually, the relevant public will be confused and misunderstood the source of the goods, which means the Disputed Mark cannot realize the trademark function.”

This point provides a new way of thinking for the future preparation of conflict cases, that is, when goods and services do not constitute similar under a legally similar situation, it is essential to demonstrate both  1)the relevance and similarity of commodities from multiple angles in combination with the possibility of actual confusion and 2)the sufficient fame related evidence to achieve cross-class protection.