On 3 September 2020 Chinese smartphone giant Xiaomi prevailed in its opposition against a mark consisting of the Chinese characters for ‘Orange Mi’ and the letters ‘cnmi’:

The case was recently selected as one of the Chinese Trademark Office’s “Exemplary Trademark Opposition and Adjudication Cases of 2020”.

Background

On 7 July 2012 Xiaomi registered its iconic MI device (depicted below) in Class 9:

Xiaomi also registered the MI logo as a work of fine arts with the National Copyright Administration in July 2012. Xiaomi expanded its trademark portfolio by registering the logo in Class 7 on 21 February 2018 and 14 April 2019.

A Chinese company, Quanzhou Guangyu E-commerce Ltd, applied to register the CNMI trademark (No 33255177) on 31 August 2018 in respect of “blenders; ironing machines; washing machines [laundry]; household soybean milk maker; electric shoe polishers; 3D printers; vacuum cleaners, among others” in Class 7.

The application was published on 13 March 2019. On 13 June 2019 Xiaomi filed an opposition citing, among other things:

• its prior trademark registrations in Class 7; and
• its copyright in the MI logo.

The examiner found that the arguments were tenable and decided to uphold the opposition.

Decision

The examiner adopted a methodical approach in analysing the case.

In assessing the similarity of the marks, the following facts were taken into account:

• the Chinese characters of the opposed trademark were semantically correlative with the trade name and Chinese trademark of Xiaomi;
• the goods covered by the opposed trademark and those covered by the cited trademarks were closely associated; and
• the applicant intended to imitate the cited trademarks, thereby taking undue advantage of the goodwill of the opponent.

In ascertaining whether there had been damage to Xiaomi’s prior copyright, the examiner focused on the following elements:

• Proof of prior proprietary copyright: the fact that the opponent has secured its own trademark registration for the MI device prior to the application for the opposed trademark corroborated that Xiaomi was the copyright owner of said work of fine arts.
• Substantial similarity: the assessment of substantial similarity under the Copyright Law hinges on whether the opposed trademark incorporates the original features of the copyrighted work. This may be limited to a part of the opposed trademark.
• Likelihood of contact: the fact that the cited trademark had been extensively used by the opponent as its main commercial sign established that the applicant had been in contact with such device and had intentionally tried to create confusion.

Comment

In practice, the originality of a sign consisting of stylised letters could be questioned by the authorities. Since copyright registration does not need to go through substantial examination, a sign the originality of which is questioned may be denied copyright protection, even if a copyright registration certificate has been acquired. It is therefore very welcome that the Trademark Office seems to be open to utilise all available avenues to curb bad-faith filings. This case also illustrates that the authorities are increasingly taking into account the intentions of trademark applicants.