The Intellectual Property Court rendered the 105-Hang-Shang-Su-139 Decision of June 29, 2017 (hereinafter, the “Decision”), holding that trademark identity means that although the trademark which is actually used is slightly different from a registered trademark in form, still the main distinctive features of the registered trademark are not substantively changed.
According to the facts underlying this Decision, the Intervenor previously designated the “Ant Digital and Device” trademark (see Figure 1 for the device) on services such as “website planning and deployment” under Class 42 and registered it as the trademark at issue with the term of the trademark beginning on October 16, 2005, which was subsequently extended to October 15, 2025. The Plaintiff applied to invalidate the trademark on December 30, 2014 on the ground that the trademark at issue had not been used for three years. The Intellectual Property Office subsequently revoked the trademark by the original disposition. Dissatisfied, the Intervenor filed administrative appeal which resulted in the reversal of the original disposition. Dissatisfied, the Plaintiff brought an administrative action pursuant to applicable procedures.
Under Article 64 of the Trademark Law, actual use of a registered trademark by the proprietor in a form differing in elements which do not affect the identity of the trademark according to general concepts in the society shall constitute use of the registered trademark. Trademark identity means that although the trademark which is actually used is slightly different from the registered trademark in form, still if the main distinctive features of the registered trademark are not substantively changed and will leave the consumers with the impression that the trademark is the same as the originally registered trademark according to general concepts in the society and consumers’ perception, the trademarks have the same identity, and the registered trademark can be deemed to have been used. (Compare Point 3.2.1 of the Guidelines for Using Registered Trademarks)
It was held in this Decision that when the Intervenor’s customers enter the back office of Ant Digital, they will see five color balls of different sizes which go with logos such as “Ant Blog,” “Ant Digital Platform Management Back Office,” and “Ant Digital ANTREPUBLIC” (see Figure 2 for drawings). Although the identification logos are five circular color shapes of different sizes, which are close but not connected to each other, and go with expressions such as “Ant Digital Platform Management Back Office” or “Ant Digital ANTREPUBLIC,” and the trademark at issue features five closely connected black circular shapes which go with wording such as “Ant Digital,” still the minute differences between the devices of the two trademarks in general do not constitute major differences in visual impressions and the identity of both trademarks is still not lost according to general concepts in the society. Therefore, the Intervenor should still be deemed to have used the trademark at issue to provide its website planning and deployment services.