The applicant, Daniela Rojo, was unwilling to accept the refused trademark decision issued by CNIPA, and entrusted BEIJING FINELAND IP FIRM to file request for review of refused trademark with CNIPA, finally succeeded in safeguarding its rights.

Briefly Description of the Case

1. Although both the applied trademark and the cited trademark contain figurative elements, they only play a decorative role. Based on the different words contained in the trademark, the meaning and prominent parts of the two trademarks are obviously different.

The comparison of the marks is as below:

The prominent part plays an outstanding role in the overall impression of the trademark, so it should be given more weight in judging the similarity of the trademark. Whether the prominent parts are the same or similar and the degree of similarity often determines whether the trademarks are similar as a whole. Specifically in this case: the figure in the applied trademark is the background and is designed around the text. Based on the habit of the relevant public to take text as the focus of reading and calling, the word "SUNIELA BEACH" in the applied trademark is undoubtedly the prominent part of the trademark. The cited trademark is a combination of figure and word. The figure only play a decorative role, while the text is undoubtedly the focus of public literacy. Therefore, the cited mark’s prominent part is the word "CORDAS".

In terms of pronunciation of the trademarks of the two parties, they are obviously different in the content and length, which will not cause any confusion or false cognition to the public. And the two marks does not constitute similar trademarks.

It can be seen that although both the applied mark and the cited mark contain "figurative" elements, the figurative elements only play a decorative role in the trademark, which is designed around the central text and is not the main recognition part at all, and does not affect the overall distinctiveness of the trademark. Therefore, as long as the relevant public pay a little attention, they can clearly distinguish the trademarks of the two parties, and there will be no confusion or false cognition, which does not constitute similar trademarks.

The applied mark and the cited mark have different sources and representative meanings. The overall meaning of the applied mark has a typical referential meaning, which represents the meaning of "beach articles with Suniela logo". The logo of the cited mark is designed around the text, and the central English word "CORDAS" which clearly refers to the registrant's business name“考特茨”can be literally translated to“字符串”.

The whole applied trademark is designed by art modeling with figure and letters elements. The overall logo sketches a circular outline through smooth lines, presenting the overall image of a beach. The bottom of the figure is decorated with letters, and the overall design is exquisite and ingenious, which fits with the theme. The figure is designed around the text in the cited mark, the overall shape is similar to the characteristic arch bridge in Suzhou, the overall image gives people sense of fresh, elegant, simple and fashionable. It can be seen that the overall constitution and composition of the two trademarks are obviously different.

2. According to the Standards for Trademark Examination and Adjudication, a trademark shall be judged as similar if the figurative part of the trademark is similar and likely to cause confusion to the relevant public about the source of goods or services. In this case, the figurative parts in both of the applied mark and the cited mark only play a decorative role and are not significant in the trademark. There are obvious differences between the applied mark and the cited mark in respect of overall meaning, pronunciation and appearance, which fully conform to the situation described in the provision of the above Standards for Trademark Examination and Adjudication but only belongs to part of the situation, so they can not constitute similar marks.

3. The trademark "SUNIELA BEACH及图" has been used and promoted by the applicant for a long time, and has formed a specific directional relationship with the applicant, also occupying a certain market share in China, and forming a stable market pattern and gaining certain popularity.

In accordance with the provisions of Article 28 of the Trademark Law of the People's Republic of China, CNIPA has decided as follows: The application for trademark designation in the 22 category reexamination commodities is approved for the territorial extension protection in China.