Many people are familiar with “COSTCO” when it comes to stores. It is known as wholesale clubs in the USA. With development, COSTCO locations around the world and has its own brand. For these reasons, COSTCO pays more attention to trademarks. Recently, a trademark opposition filed by COSTCO has aroused people’s attention.

BACKGROUND

PRICE COSTCO INTERNATIONAL, INC. filed a trademark opposition against the trademark “COSCODE” No. 40982371 (hereinafter referred to as the disputed trademark) on August 21, 2020.

The disputed trademark was published on June 6, 2020 and in respect of the goods in Class 3, which designated on the goods sharpening preparations, cosmetics for animals, waxes for leather, cleaning preparations, potpourris [fragrances], air fragrancing preparations, soap, cosmetics, toothpaste, and essential oils. 

The opponent believed that the disputed trademark damaged its business reputation and violated the provisions of Articles 7, 10, 30, and 44 of the Trademark Law. The disputed trademark was similar to the opponent’s prior registered trademark “COSTCO” No. 18842598, which would confuse the consumers.

However, the applicant of the disputed trademark didn’t respond to this opposition.

DECISION

According to the examination, CNIPA believed that the goods designated for use by the opposed trademark are similar to those of prior trademark in terms of functional use, sales channels, and so on, which belong to similar goods. The trademarks of both parties are similar in terms of composition, and the two trademarks have constituted similar trademarks used on similar goods. If the two trademarks coexist, it will easily cause confusion and misunderstanding by consumers. Hence, according to Articles 30 and 35, CNIPA held that the opposed trademark should not be registered.

COMMENTS

The opponent listed some articles of Trademark Law to claim the opposed trademark shall not be approved, such as Articles 7, 10, 30 and 44. But CNIPA only supported the reason based on Article 30 to cancel the registration of the trademark.

From this case, the similarity between these two trademarks is not high. If the applicant of the disputed trademark responded to the opposition and strongly argued the difference between the two trademarks, the result of this case may be different.

It can be seen that the opponent attaches great importance to protecting their own interests in China. They are taking all kinds of actions to prevent others from registering similar trademarks.

In addition, we can know although the expression of Article 44 of the Trademark Law is aimed at registered trademarks, from the legislative intent, its purpose is to stop the malicious application of registered trademarks in accordance with the principle of honesty and maintain good market order. This purpose should be throughout the trademark examination, approval procedure, opposition procedure and invalidation procedure. It is not necessary to wait until the trademark gets the registration to use this provision. If the opponent can submit sufficient relevant evidence to approve the trademark application was malicious, CNIPA would not approve the registration.