Shanghai Linksure Network (here after referred to as "the Opponent")entrusted Foridom IP Law Firm to file an opposition application against the No. 29848377 "MASTERKEYS" trademark (here in after referred to as "the Opponent trademark").
The Opponent trademark: No. 29848377
No.1 Cited trademark: No.16974710
No.2 Cited trademark: No.16354460
Objection strategy and reasons:
1.The opposed trademark is similar to the No.1 cited trademark
The service of the opposed trademark is "zoo service", which belongs to the 4106 similar group as the "animal training" in the service item of the No.cited trademark. Therefore, it has caused similarity as stated in the trademark examination standards that they are "the specified goods or services of the same kind".
The No.1 cited trademark is originated from a foreign-language, which consists of tworelatively independent parts "WiFi" and "MasterKey". Amongthem, "WiFi" is a common word with a low distinctiveness, so the core prominent part is "MasterKey". The opposed trademark consists of all the capital letters "MASTERKEY" plus "S" in the prominent part of the No.1 cited trademark.
According to the relevant regulations, two trademarks or one of them are composed of two or more relatively independent parts, and if the significant parts are similar,which may confuse the relevant public with regard to the source of the goods or services, they shall be determined as similar trademarks.
2. The No.2 cited trademark has reached well-known standard after being used and publicized by the opponent
The opposed trademark only adds "S" after the word of the No.2 cited trademark, which is the plural form of the No.2 cited trademark. It is hard to be a coincidence. As it can be seen as bad faith, namely, the trademark registration was acquired by illicit means. According to Articles 7 and 32 of the "Trademark Law" and the application of Article 44 by analogy, the opposed trademark shall not be approved for registration.
Moreover, the customer of the goods and services to which the trademark standard sample is cited by the opponent is the general public. The target customer of the two companies are the same, so when the opposed trademark coexists with the No.2 cited trademark, it is easy to confuse with the relevant public concerning the source of the service, thereby it has damaging the prior rights of the No.2 cited trademark.
Decision: No. 29848377 shall not be registered
Ms. Gan Zhangguai, the senior partner of Foridom IP Law Firm, has earned patent attorney, trademark attorney, technical broker, and member of the International Trademark Association, with more than ten years of professional experience in intellectual property rights.
The main practice areas are of her are domestic and foreign patent, trademark, copyright and project declaration affairs. She is good at patent and trademark planning and layout, patent and trademark international cases, project planning, etc.
She has provided a full range of intellectual property legal services for the company,such as Juneyao Airlines, NU SKIN, Caohejing Hi-Tech Park, Kimberlite Diamond, The Oriental Pearl TV Tower, BesTV, Vingoojuice, DAZZLE, WiFi Master key, SLAMTEC, Taoyuan Village, PETKIT, JAMES DEAN, HADO, Boni Selection and Shiheng Technology，highly praised by customers.
Ms. Hua Fei, senior trademark attorney with 5 years professional experience, focusing on both domestic and international trademark and copyright affairs. She is good at trademark planning and layout, trademark international cases. In addition, she has provide intellectual property legal services for Caohejing Hi-Tech Park, Zizhu Group, Kimberlite Diamond, WiFi Master Key, DAZZLE, Boni Select, AVIKO, Taoyuan Village, HADO and other companies.