Abstract: The determination of similar trademarks infringement is a common and important issue in Customs intellectual property protection. How to determine whether relevant trademarks constitute similar and whether the goods involved are infringing goods is not only a common problem in Customs enforcement but also an important issue concerning vital interests of intellectual property rights holders and import and export enterprises. In addition to paying attention to what standards Customs uses to determine a similar trademark in administrative procedures, the standards for determining a similar trademark in judicial procedures is also a problem that enterprises need to pay attention to. Based on this, the notes in this issue revolves around the following three aspects to clarify Customs standards and judicial standards for determination of similar trademarks.

1. What are the basis and standards for determining the similarity of trademarks in Customs intellectual property protection?

2. Are Customs standards the same as judicial standards for the determination of similar trademarks infringement? If there is a difference, what is the connection and degree of recognition between the two precedures?

3. What do enterprises need to focus on in import and export to prevent the risk of violations of similar trademark infringement in Customs?

Keywords:Similar Trademarks, Infringement Determination, Customs Standards, Judicial Standards

(I) Elements and hints of the Customs case

Series cases of infringements upon trademark rights of foreign brands seized by Xiamen, Urumqi, and Xi'an Customs

Case Summary:

In April 2021, when inspecting the garden shoes declared for export by a company in Jinjiang, Xiamen Customs found that 10,200 pairs used the “croos” mark. The right holder believed that the mark on the above goods was similar to its registered trademark “crocs” filed with the General Administration of Customs for record and applied for IPR Customs protection. Customs detained the suspected infringing goods pursuant to the law and made the administrative penalty decision after investigation, that is, confiscating the infringing goods and concurrently imposing a fine. On this basis, Xiamen Customs further sorted out the risk parameters to carry out targeted crackdown and seized three batches of garden shoes exported by different enterprises using the “croos” mark, totaling 27,720 pairs.

Excerpts from the Customs Decision on Administrative Penalty:

“After investigation, it was confirmed that the mark on the goods exported by the party is similar to the registered trademark of the right holder, and without the licensed use of the trademark right holder. Pursuant to the provisions of Article 57 paragraph 2 of the Trademark Law of the People’s Republic of China, the goods are the goods infringing upon the exclusive right to use a registered trademark. The act of exporting such goods constitutes the act of exporting goods infringing upon the exclusive right to use a registered trademark...... Pursuant to Article 25 paragraph 1 of the Implementation Regulations of the Customs of the People’s Republic of China on Administrative Penalties, it is determined to impose following administrative penalties on the parties: confiscation... ...and impose a fine...”

(The above is from the General Administration of Customs of the People's Republic of China: “Typical Cases of China Customs Intellectual Property Protection in 2021”, http://www.Customs.gov.cn//Customs/ztzl86/302414/302415/gmfc40/ 2813466/4324169/index.html, last accessed on May 21, 2022)

This is a typical case of Customs intellectual property protection, and we give the following hints on the elements relevant to the topic of this issue.

1.The suspected infringed trademark in the case has been filed in advance with the General Administration of Customs for record.

2. The case is an example of the ex-officio protection mode of Customs.

The description of the case shows that the Customs found that the relevant goods were suspected of infringing upon the exclusive right to use a registered trademark through inspection. Under the ex-officio mode, according to the regulations, the Customs will take the initiative to notify the right holder, who will decide whether to start the protection procedure of the relevant rights.

3. “According to the provisions of Article 57 paragraph 2 of the Trademark Law of the People’s Republic of China, the goods are the goods infringing upon the exclusive right to use a registered trademark……”, it can be seen that the Customs’ determination of what constitutes the similarity of trademarks is based on the Trademark Law.

4. “According to the Article 25 paragraph 1 of the Implementation Regulations of the Customs of the People’s Republic of China on Administrative Penalties, it is decided to impose the following administrative penalties on the parties: confiscation... ...and impose a fine...”, it can be seen that the Customs penalties for infringement in import and export are based on the Implementation Regulations of the Customs of the People’s Republic of China on Administrative Penalties.

(II) Customs enforcement basis and reference standards for determining the similarity of trademarks

In the above case, we visually demonstrated the enforcement basis of Customs for determining similar trademark infringements, namely the Trademark Law. The Trademark Law establishes the principle provisions for Customs enforcement, and in practice, Customs also refers to the standards of the trademark authorities and courts to make determination.

In addition, Customs in determining similar trademark infringements has formed its own steps, summarized as follows: 1. To determine whether the relevant mark is related to and actually used on the import and export goods. 2. To determine whether the suspected infringement constitutes “use” within the meaning of trademark law. 3. To determine whether the suspected infringing mark is similar to the registered trademark of others. 4. To determine whether the goods belong to identical or similar classes. 5. To determine whether it may easily cause confusion.

In the following, we will sort out the Customs enforcement basis and reference standards for the determination of similar trademarks one by one.

1.The legal basis for Customs to determine the similarity of trademarks is mainly the Trademark Law

In principle, Customs supervises and administrates the entry and exit at customs areas pursuant to the Customs Law and other relevant laws, administrative regulations, and departmental rules and regulations. On the issue of determination of similar trademarks, with the degree of relevance as the core, Customs enforcement is mainly based on the Trademark Law, and other regulations or guiding documents would be used as references for Customs enforcement as appropriate. As shown in the case, in the decision of administrative penalty for IPR infringement cases, Customs will only cite the Trademark Law as the basis of the penalty in addition to the provisions of the Customs legal system.

2. Customs will refer to the Judging Criteria for Trademark Infringement and the Guidelines for Trademark Review and Adjudication to determine the similarity of trademarks.

The administrative procedures involving the determination of the similarity of trademarks in China mainly include two major categories. First, trademark registration and administration procedures. China implements the trademark registration system, i.e. the trademark right can only be obtained through the trademark registration procedure. As trademark administrative authority, the Trademark Office undertakes tasks including trademark examination and registration, administrative adjudication, etc. In the trademark registration and examination procedures and the subsequent trademark objection and trademark invalidation procedures, the determination and judgment of the similarity of trademarks will be involved. Second, trademark enforcement procedures. The exclusive right to use a registered trademark enjoys administrative protection in China, and the administrative authority for trademark enforcement has the right to investigate and penalize trademark infringements, and the right to determine whether the trademarks are similar.

From the enforcement basis for regulating the administrative procedures for determining the similarity of trademarks, at present, the main regulation governing trademark registration and administration procedures is the Guidelines for Trademark Review and Adjudication, and the main regulation governing trademark enforcement procedures is the Judging Criteria for Trademark Infringement. Customs investigation and penalty of infringing goods belong to the administrative enforcement procedures, so the Customs will refer to the Guidelines for Trademark Review and Adjudication and the Judging Criteria for Trademark Infringement to determine the similarity of trademarks.

The following is a brief introduction to the basis and points for determining the similarity of trademarks in the current administrative procedures in China.

(1) Determination of the similarity of trademarks in trademark registration and administration procedures: pursuant to the Guidelines for Trademark Review and Adjudication

In the trademark registration and administration procedures, there is a slight difference for the determination of similarity of trademarks between the application and review procedures and the objection and invalidation procedures. The latter adds the requirement of determining “whether it is easily to cause confusion”.

In the trademark application and review procedures, at this stage, the trademark administrative authority mainly considers the similarity of trademarks themselves and does not need to consider whether it is easily to cause confusion.

In trademark objection and invalidation procedures, since the use of similar trademarks will harm the interests of specific entities, the prior rights holder or interested parties may raise objections against or apply for invalidation of similar trademarks. Compared with the determination in the trademark registration examination procedures, the similarity determination in these procedures add the requirement to determine whether it is “easily to cause confusion”.

Summary of Elements

Article 5 in the Guidelines for Trademark Review and Adjudication：

2. Definition; 3: Principles and methods for determination

Definition of the similarity of trademarks: It means that although the constituent elements of a trademark such as the text, graphics, alphabets, numbers, three-dimensional mark, color combinations, sounds and other elements of the registered trademark are slightly different in pronunciation, vision, meaning or arrangement. The similarity of text trademark should mainly consider three aspects of “shape, sound, and meaning”; graphic trademarks, should mainly consider composition, appearance and colours; combination trademarks should consider not only the overall appearance but also the parts of distinctiveness.

Principles and methods for the determination of similarity: First of all, it should be determined whether the goods or services designated for use fall in the same or similar goods (services). 2. From the aspects of the “shape, sound and meaning” of the trademark itself and the overall expression, the general attention and cognition of the relevant public should be used as the standard, and the methods of isolation observation, overall comparison, and main part comparison should be used to judge whether the trademarks are same or similar.

In the examination of trademark registration, the determination of identity and similarity mainly considers the degree of similarity of the trademark marks themself. In other procedures, on the basis of determining that the trademark marks are same or similar, the following factors should also be considered to comprehensively determine whether the use of the trademark on the same or similar goods or services is likely to confuse the relevant public about the source of the goods or services.

Elements for determining whether it’s easily to cause confusion: 1. The distinctiveness of the prior trademark. 2. The popularity of the prior trademark. 3. The degree of attention of the relevant public. 4. The subjective intention of the trademark applicant. 5. Others (such as the location of the trademark applicant, the way the trademark is used, whether the trademark applicant and the owner of the quoted trademark fall in the same industry, etc.)

(2) Determination of the similarity of trademarks in trademark enforcement procedures: pursuant to the Judging Criteria for Trademark Infringement

In 2020, the State Intellectual Property Office issued the Judging Criteria for Trademark Infringement, which provides more systematic regulations on the determination of the similarity of trademarks in administrative enforcement procedures. Customs protection measures of intellectual property rights in import and export fall in administrative enforcement. Both in theory and in practice, the Judging Criteria for Trademark Infringement is an important reference for Customs to determine whether the relevant trademarks constitute similarity.

In addition, the Judging Criteria for Trademark Infringement further provides in Article 16 that “Determination of similar trademark infringements shall be judged by reference to the provisions on the similarity of trademark in the existing Trademark Review and Adjudication Standards”. The Trademark Review and Adjudication Standards have been repealed by the Guidelines for Trademark Review and Adjudication effective from January 1, 2022. Therefore, the principles and methods for the determination of similar trademarks in the Guidelines for Trademark Review and Adjudication, as well as relevant considerations, can be used as reference standards for Customs enforcement.

Summary of Elements

(Article 15-24 of the Judging Criteria for Trademark Infringement)

Definition of the similarity of trademarks: A trademark that is similar to a registered trademark means comparing a suspected infringing trademark with a registered trademark of others, (1) in the case of a text trademark: the shape, pronunciation and meaning of the texts are similar; (2) in the case of a graphic trademark: the design, colouring, and shape are similar; (3) in the case of a text-graphic combination trade mark: the overall arrangement or combination and appearance are similar; (4) in the case of a three-dimensional trademark: the shape and appearance of the three-dimensional sign are similar; (5) in the case of a colour combination trademark: colour or combination of colours are similar; and (6) in the case of a sound trademark: the auditory perception or the overall music image are similar

Principles for the determination of similarity: 1. In the judgment on trademark infringement, using similar trademarks on the same commodities or services, or using the same or similar trademarks on similar commodities or services. 2. To judge whether a trademark is same as or similar to a registered trademark, the standard shall be the general attention and cognition ability of the relevant public, and the identification methods shall be isolated observation, overall comparison and comparison of major parts etc. 3. The likelihood to cause any confusion shall also be taken into account.

Elements for the possibility of confusion: 1. Similarity of the trademarks. 2. Similarity of the commodities or services. 3.The distinctiveness and popularity of the registered trademark. 4. The characteristics of the commodities or services and the manner in which the trademark is used. 5. The degree of attention and recognition of the relevant public. 6.Other relevant factors.

3. Judicial determination standard is also the reference standard for Customs to determine the similarity of trademarks in practice

The court’s determination of the similarity of trademarks mainly involves two types of cases: one is the civil litigation cases based on trademark rights, which are mainly based on the Trademark Law and Interpretation of Supreme People’s Court on Several Issues Concerning the Application of Law in the Hearing of Civil Cases Involving Trademark Disputes. The other is the administrative litigation cases in which the parties initiated against the relevant administrative acts, and the basis for determination includes, in addition to the aforementioned provisions, Rules of the Supreme People’s Court on Issues Relating to the Hearing of Administrative Cases Involving Granting or Affirming Trademark Rights, etc. In addition, the prior effective judgments in practice are also of guidance for similar cases.

Why is the judicial determination standard also a reference standard for Customs to determine the similarity of trademarks?

Based on the opening case, if the parties concerned refuse to accept the administrative penalty decision of the Customs determination for the similarity of trademarks and infringement of the exclusive right to use a registered trademarks of others, and file an administrative lawsuit with the court, Customs determination of the similarity of trademarks and the legality and appropriateness of the administrative penalty decision will inevitably face judicial review and supervision, and whether it constitutes similar trademark infringement is the factual basis of the administrative penalty decision. For the Customs, in order to maximize the prevention of law enforcement risks, it is necessary to refer to the judicial determination standards while imposing administrative penalty decision.

Summary of Elements

Article 9 and Article 10 of Interpretation of Supreme People’s Court on Several Issues Concerning the Application of Law in the Hearing of Civil Cases Involving Trademark Disputes (Amended in 2020)

Definition of the similarity of trademarks: The term “trademarks that are similar” means that when comparing the suspected infringing trademark with the plaintiff’s registered trademark, the shape, pronunciation or meaning of the words or the composition or color of the design are similar, or the overall structure after their key elements are combined is similar, or their three-dimensional shape and combination of colors are similar so that the relevant public is likely to misidentify the source of the goods or believe that there is a certain connection between the source of the goods and the goods bearing the plaintiff’s registered trademark.

Principles for determination of similarity: 1. taking the general perception of the relevant public as the standard. 2. trademarks should be compared both in their entirety and with their key elements; the comparison should be carried out with the objects of comparison being kept apart. 3. when determining whether trademarks are similar, the request for the protection of the distinctiveness and popularity of the registered trademark should be considered.

Based on the above, the following is a brief review of the criteria for determining similar trademarks in judicial procedures.

(1) Civil Litigation Involving Trademark Disputes

In trademark infringement litigation, three requirements should be met in the determination of the similarity of trademarks: first, whether the two trademark marks themselves constitute similarity; second, whether the two types of goods or services are the same or similar; third, whether the two trademarks are likely to confuse the relevant public, where confusion refers to the relevant public mistaking different goods or services for the same source or mistaking the source of different goods or services for the existence of a specific relationship between them. The confusion does not require the actual occurrence, but only the “possibility of confusion”.

From the principles of similarity determination, the determination of the similarity of trademarks in judicial procedures needs to be made from the perspective of the relevant public and follow the principle of case-by-case determination, taking into account not only the similarity of the constituent elements of the trademark and the relationship between the trademark and the goods but also the popularity and distinctiveness of the trademark itself, as well as the degree of relevance of the goods or services used.

The determination of similarity in judicial practice needs to pay particular attention to the following factors in order to comprehensively determine whether it is easily to cause confusion:

1. The distinctiveness and popularity of the plaintiff’s trademark

2. The meaning of the trademark expressed through words, pronunciation and graphics and the impression it leaves on the relevant public.

3. The degree of similarity between goods or services

4. The channels of transaction, market distinction and the specific situation of the relevant public.

(2) Trademark Administrative Proceedings

In administrative lawsuit, the relevant bases and requirements mentioned above still apply. At the same time, in order to better adjudicate administrative cases of trademark authorization and confirmation, the Supreme People’s Court has further provided for the adjudication of trademark administrative lawsuit in the Rules of the Supreme People’s Court on Issues Relating to the Hearing of Administrative Cases Involving Granting or Affirming Trademark Rights, namely, in cases regarding the determination of similar trademarks of a well-known trademark which others have not applied for registration in China, the elements to be considered by the court in determining whether confusion is likely to be caused have been further refined. Reference is made to the following.

Legal Basis

Article 12 and Article 13 of the Rules of the Supreme People’s Court on Issues Relating to the Hearing of Administrative Cases Involving Granting or Affirming Trademark Rights

In the same or similar goods, the following factors and the mutual effect among such factors should be considered to determine whether or not the trademark in dispute is likely to lead to confusion: 1. The degree of similarity of the two trademarks. 2. The degree of similarity of the commodities involved. 3. The degree of distinctiveness and popularity of the trademark under the application for protection. 4. The degree of attention to which relevant public pay. 5. Other relevant factors. The subjective intention of the trademark applicant as well as the proof of actual confusion may be taken as reference factors to determine the possibility of confusion.

In the same or similar goods, the following factors and the mutual effect among such factors should be considered to determine whether the public is likely to mistake the relation: 1. The distinctiveness and degree of popularity of the quoted trademark; 2. Whether the signs of trademark in dispute are similar enough; 3. Information about the commodities on which the trademarks in dispute are designated to use; 4. The degree of overlap and attention of relevant public; and 5. Information about the legitimate use of the sign similar with the quoted trademark by other market players or other related factors.

As mentioned above, there may be a “crossover” between Customs administrative determination and judicial determination on the determination of the similarity of trademarks, more precisely, once the Customs administrative act is brought to the court, the Customs determination standards need to be reviewed by the judicial standards. In order to illustrate this point more clearly, we have selected three cases of Customs intellectual property administrative lawsuit, from which we have extracted and summarized the key points of Customs and court discussions on the determination of the similarity of trademarks so that we can directly make comparative analysis about the Customs standards and judicial standards.

(I) Summary of Customs standards and judicial standards in court jurisprudence

We summarize the high-frequency words in the above table when the Customs and courts state whether the relevant trademarks constitute similar trademarks as follows.

1.Customs high-frequency words of the determination standards.

Same Class, Similarity of trademarks, Popularity, Confusion

2. Judicial high-frequency words of the determination standards.

Same or Similar goods, Similarity of Trademarks, Distinctiveness and Popularity, Confusion

(II) Brief analysis

By summarizing the high-frequency words of Customs standards and judicial standards in determining the similarity of trademarks, it can be seen that the standards for determining the similarity of trademarks between courts and Customs are basically the same, and we briefly analyze them as follows.

(I) For trademark rights holders, it is necessary to use the Customs to block infringing goods and protect their own rights and interests in the import and export links.

In particular, rights holders need to pay attention to the following points:

The first is to record the registered trademarks with the Customs as far in advance as possible, so as to provide reference for the Customs to investigate and deal with trademark infringement cases, especially similar trademark infringement cases;

The second is to cooperate with Customs law enforcement in the process and explain the determination standards and relevant basis of similar trademarks as much as possible;

Thirdly, in the post-event dispute, the basic position and mutual connection of Customs determination and judicial determination should be considered in an overall manner, so as to better handle disputes or protect their own rights and interests in disputes of other subjects.

(II) For import and export enterprises, it is necessary to guard against legal risks brought by similar trademark infringement

To this end, import and export enterprises need to fully understand the legal basis and determination principles of similar trademark infringement, and strictly examine whether the mark on the goods has a legal basis for rights or whether there is a possibility of infringing the trademark of others during the import and export process. When there is a possible risk of trademark infringement, risk assessment and response plans should be initiated immediately to prevent or block the risk.

Summary of Notes

1.At present, the legal basis for the similarity of trademark determination varies in the process of judicial and administrative procedures, or between judicial and administrative procedures. Based on this there are differences in the meaning, principles of determination, and elements of consideration of the similarity of trademarks. However, with the development of legislation, the consistency of the same topic in different procedures is receiving more and more attention, and the relevant provisions are gradually converging.

2. Customs inevitably involves the determination of similar trademarks in the border protection of intellectual property rights, and its main enforcement basis for determining whether the relevant trademark constitutes similarity is the Trademark Law, it may also refer to the Judging Criteria for Trademark Infringement, which is, after all, a specific standard provided by the competent trademark authority for determining whether a trademark constitutes similarity in the administrative enforcement procedure, and has great guiding significance in practice. Of course, from past cases and practical experience, the Customs may also refer to the standards in judicial procedures, or even relevant judicial precedents, when determining the similarity of trademarks.

3. Understanding the Customs standards and judicial standards for the determination of similar trademark infringement, trademark rights holders can use Customs enforcement to block infringing goods in the import and export to protect their own rights and interests; for import and export enterprises, they need to pay attention to the risk of infringement and prevent the legal risks brought by similar trademark infringement. The article has made tips on the key points respectively that each party needs to pay attention to.

(The content of this article, including the table summarized is original, please cite the source)