Abstract
We filed an opposition action against the trademark,安萃莱 (No.73460963 in Class 5) (“the opposed mark”) on behalf of TEVA PHARMACEUTICAL INDUSTRIES LIMITED(“Client”) on April 22, 2024. The National Intellectual Property Administration, PRC (“CNIPA”) examined the case and decided to reject the opposed mark for registration.
Background
The client is the largest generic pharmaceutical group in the world. The cited trademarks "安齐来" and "安齐莱" are the names of drugs used to treat clinical deterioration in Parkinson's disease. These names do not have any inherent meaning and serve as the Chinese names for the client’s core brand "Azilect." They are registered under Class 5 goods and possess strong originality and inherent distinctiveness. The client was of the opinion that the opposed mark is a “similar mark over similar goods” compared with the client’s cited marks "安齐来" and "安齐莱"in Class 5. Upon communication with client, we were entrusted to file opposition against this trademark.
The details of the opposed mark and the cited marks are listed as below.
The Opposed Mark | Cited Mark 1 | Cited Mark 2 | Cited Mark 3 | |
Trademark |  |  |  |  |
App. No. | 73460963 | 13661111 | 27285501 | 8361936 |
App. Date | August 14, 2023 | December 4, 2013 | November 6, 2017 | June 4, 2010 |
Reg. Date | - | April 14, 2015 | October 14, 2018 | June 14, 2011 |
Class | 5 | 5 | 5 | 5 |
Subclass &Designated Goods | Ointment; Skin care (Pharmaceutical preparations for –); Medicines for human purposes; Acqueous formulation; Pharmaceutical preparations, etc. | Pharmaceutical preparations for the treatment Parkinson's disease; Pharmaceutical formulation for the treatment of central nervous system disorders | Drugs for medical purposes; Radioactive substances for medical purposes; Disinfectants, etc. | Pharmaceutical preparations for the treatment Parkinson's disease; Pharmaceutical formulation for the treatment of central nervous system disorders |
Key Issues
In the opposition action, we mainly argued that:
1) The opposed mark is a similar mark over same or similar goods compared with the Cited Marks. Coexistence of the marks in the market may easily cause confusion or misleading to the relevant public, in violation of Article 30 of the China Trademark Law;
2) Given that the cited marks have acquired a high reputation, registration and use of the opposed mark will more easily cause misunderstanding amongst the relevant public;
3) The opposed party filed the opposed mark by improper means, and registration and use of the opposed mark violates the principle of good faith, in violation of Articles 4, 7,10.1(8) and 44 of China Trademark Law.
On February 15, 2025, the CNIPA issued the decision: The opposed mark is similar to the Cited Marks in terms of words composition, pronunciation and overall appearance, and the designated goods of the opposed mark are same as or similar to those of the Cited Marks in terms of function, use purpose, sales channels and consumers. Therefore, the opposed mark is a “similar mark on similar goods” to the cited marks, the coexistence of the marks may easily cause confusion and misleading to the goods' source among the relevant public, in violation of Article 30 of China Trademark Law. There is no evidence proving that the disputed mark violates Articles 4, 7,10.1(8) and 44 of China Trademark Law.
Key Point of the Case
The key issue of this case is that 1) the opposed mark is a “similar mark” with the cited marks; and 2) the goods of the opposed mark are similar to those of the client’s cited marks.
With respect to issue 1, trademark similarity refers to the resemblance in the script, pronunciation, and meaning of trademark text, or the appearance of graphics, or the overall arrangement and appearance of combinations of text and graphics. When used on identical or similar goods, such similarity may easily lead the relevant public to mistakenly believe that the goods come from the same source. To determine whether two trademarks are similar, one should consider the general recognition of the trademark by the relevant public and their understanding of the text, graphics, and other components of the trademark. This involves considering both the overall degree of similarity between the trademarks and the distinctiveness and fame of the relevant trademarks, as well as factors such as the opposed party's malicious intent and the use manner of the trademark. The standard for judgment is whether it is likely to cause confusion.
According to the "Trademark Examination and Trial Standards," if a Chinese trademark consists of three or more Chinese characters with only individual characters different, and the overall meaning is either absent or not significantly distinct, leading the relevant public to potentially misidentify the source of goods or services, it shall be determined as a similar trademark, for example 
and 
. In our case, the opposed trademark and the cited trademarks both consist of three Chinese characters. The first character is identical, being "安", and the final characters "来" and "莱" are visually similar. Therefore, the two trademarks are similar in terms of character composition and pronunciation, and neither has an overall meaning. As a result, if both parties' trademarks coexist, it could easily cause confusion among the relevant public regarding the origin of the goods, leading to misidentification. Therefore, the parties' marks should be determined as similar trademarks. We also submitted several precedents, such as invalidation decision of the mark “安泰莱” vs "安齐来" and "安齐莱", opposition decision of the mark “安洛莱” vs "安齐来" and "安齐莱", to prove that the opposed mark is similar to the cited marks. In addition, we also submitted abundant evidence to prove the cited marks’ high reputation in China before the filing date of the opposed mark, thus, coexistence of the opposed mark and the cited marks may easily cause confusion amongst the relevant public.
With respect to issue 2, because the client registered the cited marks covering the goods in subclasses 0501 and 0506, all the goods designated by the opposed mark also fall into these subclasses, the argument of similar goods is quite straightforward based on Chinese Classification system.