Meaning of “Medical” is important to trademark order in the field of medical treatment—Talk on the Case regarding Declaration for Invalidation of the Trademark “达芬奇LEONARDODAVINCI”
2021-07-02 Trademark Chen LIAO

Whatever SARS in many years before or the COVID-19 in year 2020, when the public health poses challenges to the society, the goods related to the medial instruments will receive many attentions because they touch on people’s life and healthy. Therefore, for the field of medical instruments, the whole process from producing, sale and to the use, should be extremely in line with the standards, such kind of requirements of standards will have great influence for the field of trademarks. Here, the writer will share some experience through a case. 

Zhi Jun Wai Ke Company Limited (the appellee, the plaintiff of the first instance) filed the request of the declaration of invalidation to the Trademark Review and Adjudication Board (TRAB) (current China National Intellectual Property Administration, the appellee, the respondent of the first instance) against the trademark “达芬奇LEONARDO DA VINCI (hereinafter referred to as “disputed trademark”) with number 18695442, which belonged to Qingdao Lanxin Shareholding Co., Ltd. (the appellant, the third party of the first instance), and approved to be used goods on Class 10 “false tooth; pins for artificial teeth; artificial teeth; dental equipment and instruments; test instrument for the medical purpose; sprayer for the medical purpose; otolaryngological instruments; orthodontic appliances”. The respondent made decision on the request of declaration of invalidation (Shang Ping Zi [2018] No.152180), the respondent ruled that, 

The disputed trademark is a combination of words “达芬奇” and “LEONARDO DA VINCI”, it has constituted similar trademarks with the cited trademark due to the inclusion of “DA VINCI”. The approved goods of the disputed trademark “otolaryngological instruments” and the approved goods of the cited trademark’s goods surgical instruments and facilities belong to similar goods. The approved goods of the disputed trademark “false teeth, dental instruments and equipment” are not constituted similarity with the cited trademark’s approved goods of surgical instruments and facilities. To sum up, the disputed trademark should be declared for the invalidation on goods of “otolaryngological instruments”, while to retain the rest of other goods. 

The plaintiff refused the rule on the request for the declaration of the invalidation and filed administrative lawsuit to Beijing Intellectual Property Court on 9th October 2028, the case number was (2019) Jing 73 Xing Chu No. 1270. Beijing Intellectual Property Court has made a judgement of the first instance on 25th July 2019, it ruled that “the goods “ test instrument for the medical purpose; sprayer for the medical purpose; otolaryngological instruments” approved to be used by the disputed trademark, and the goods “surgical instruments and facilities; lamps for the medical purpose” approved to be used by the cited trademark belong to the same group 1001 in the Classification Table, therefore, they constituted similarity on the goods. 

Although the approved goods (i.e. “false tooth; pins for artificial teeth; artificial teeth; dental equipment and instruments; test instrument for the medical purpose; sprayer for the medical purpose; otolaryngological instruments; orthodontic appliances” ) of the disputed trademark did not belong to the same group in the Classification Table with “surgical instruments and facilities; lamps for the medical purpose” the approved goods of the cited trademark, however, they belong to instruments and materials will be used on human bodies during the medical service, the main consumer objects are sales person, doctors and patients in the medical institutions, they have significant coincidence regarding the sale channel, location of use, functions and consumer objects, the relevant public will held that there is some specific relevance among them. Considering the third party did not file the evidence of use for the disputed trademark, however, the recorded evidence can prove that the plaintiff has correspondingly used the “DA VINCI” and “达芬奇” on surgical instruments and equipment and enjoy reputation at some certain level, if the disputed trademark has been used on its approved goods, it will easily cause confusion among the public. As a result, the disputed trademark and all cited trademarks have constituted similarity on similar goods, it violated Article 13 of China’s Trademark Law.” To sum up, the court for the first instance ruled the adjudication should be quashed, the defendant should make new adjudication on the request for the declaration of invalidation regarding the disputed trademark. Qingdao Lanxin Shareholding Company appealed to Beijing Superior People’s Court with the case number (2019) Jing Xing Zhong No. 9875, Beijing Superior People’s Court uphold the verdict of the first instance. 

This case is the administrative lawsuit for the declaration of invalidation on the trademark, both concerned parties, “Zhi Jue Wai Ke Company Limited” and “Qingdao Lanxin Shareholding Company”, were practitioners in the healthcare industry, the disputed trademark and cited trademarks are all trademarks to be used on goods, such as surgical equipment and instruments, in medical field. As per the writer’s survey, in the past administrative cases of confirmation and authorization on trademarks, it is barely to break the Classification Table, to hold that ““false tooth; pins for artificial teeth; artificial teeth; dental equipment and instruments; test instrument for the medical purpose; sprayer for the medical purpose; otolaryngological instruments; orthodontic appliances” under the group 1002, constituted similarity with the goods “surgical instruments and equipment” under the group 1001. Therefore, this case offers a kind of the review thinking and standard which is more in line with the market reality and the trademark management order. 

Also, the court comprehensively considered elements below in the case: 

Cited trademarks have significance and reputation in the medical field. In this case, surgical robot and attached surgical instrument designed to be used by the cited trademark, have been initially introduced to China by PLA General Hospital in year 2007, until now, it has conducted almost 30,000 surgeries in many Chinese hospitals, and made outstanding contributions to China’s medical industry. 

While, The First Hospital Affiliated to the University of Qingdao, the location of the third party, also obtained the qualification to purchase “DA VINCI/达芬奇” surgical robot in the year of 2014, this piece of information has been extensively reported in Qingdao city and Shandong province, this was proved the reputation of the cited trademark, as well as the location of the third party was in Qingdao City Shandong province. 

The degree of correlation between the approved medical instruments goods for the disputed trademark and cited trademarks. In this case, a number of coverages proved that, in the practice, “surgical robot” designated to be used by the cited trademark can operate kinds of surgical tools, i.e. surgical knife, scissor, tweezers, laparoscope, etc. Also, the cited trademark has been proved to approve on the same group of surgical tools that were different from tools mentioned above, i.e. surgical knife, medical calm, tongue scraper. Therefore, in consideration of the approved goods “false tooth; pins for artificial teeth; artificial teeth; dental equipment and instruments; test instrument for the medical purpose; sprayer for the medical purpose; otolaryngological instruments; orthodontic appliances” for the disputed trademark, and the approved goods “surgical instruments and equipment” for the cited trademark, were both belong to instruments and materials will be used on human bodies during the medical service, the main consumer objects are sales person, doctors and patients in the medical institutions, they have significant coincidence regarding the sale channel, location of use, functions and consumer objects.

Situation of using trademarks by the owner of the disputed trademark and cited trademarks. The owner of the disputed trademark barely offered any piece of evidence regarding the use of the disputed trademark, while the owner of the cited trademark has offered evidence in detail to prove the reputation of the cited trademark.

The writer thought that, during the process of reviewing the case, the court has made full investigation on the use status of the cited trademark’s designated goods in major public hospitals in China, also, combining the malicious of application for the registration of the disputed trademark, as well as the possible chaos may be posed to the medical order, finally, the disputed trademark has been invalided on its’ all approved goods via break-through regulations in the Classification Table. It not only conforms to the legislative spirit of Trademark Law, but also keep the order off the trademark management, also to avoid brand confusion and abuse in the field of medical instruments, it has good social impact on the medical market which is concern the people healthy. 

Mrs. LI Shuhua and her legal service team from Beijing Janlea Law Firm provided Zhi Jue Wai Ke Co., Ltd. with full legal service during the first and second instance.

Practise Fieled:
Trademark opposition, cancellation, invalidation, rejection review, and other trademark review and adjudication cases; Litigation and non-litigation affairs.
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Chen LIAO Lawyer TEL:010-68390848
Email:lchen@janlea.com.cn
Expert Field:Trademark opposition, cancellation, invalidation, rejection review, and other trademark review and adjudication cases; Litigation and non-litigation affairs.
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