Case Sharing [How to succeed when there is 14 cited prior trademarks]

Decision of Reexamination of Refusal

in respect of the trademark “育儿世家BabyCare family” No. 36774779  

Trademark Review Case [2021]No.000057428

Applicant: Shenzhen Youbao maternal and Infant Products Co., Ltd

Entrusted agent: Beijing TopWin International Intellectual Property Agency Co., Ltd

The applicant is not satisfied with the rejection by our office of its trademark application “育儿世家 BABYCARE FAMILY” No. 36774779 (hereinafter referred to as the trademark applied), and request for reexamination to our bureau. The request was accepted, and the reexamination is now concluded.

The following are the main reasons by the applicant’s for the reexamination:

The trademark applied is obviously different from and does not constitute any similarity to the cited trademarks:”育儿世家 BABYCARE FAMILY”  No. 14785016 (hereinafter referred to as the cited TM No.1), “育儿children’s education with design” trademark No.5528872 (hereinafter referred to as the cited TM No.2),  “BabyCare with design” trademark No. 29196753 (hereinafter referred to as the cited TM No.3), “baby care family” trademark No. 14784377 (hereinafter referred to as the cited TM No.4), “baby care with design” trademark No. 22384630 (hereinafter referred to as the cited TM No.5), “baby care with design” trademark No. 22423355 (hereinafter referred to as the cited TM No.6), “baby care with design” trademark No. 25271864A (hereinafter referred to as the cited TM No. 7), “Baby care with design” trademark No. 25796162 (hereinafter referred to as the cited TM No. 8), “baby care with design” trademark No. 25800902A (hereinafter referred to as the cited TM No.9), “baby care with design” trademark No.28371240 (hereinafter referred to as the cited TM No.10), “baby care with design” trademark No. 30523931 (hereinafter referred to as the cited TM No.11), “baby care with design” trademark No. 30537975A (hereinafter referred to asthe cited TM No.12), “baby care with design” trademark No.32933689 (hereinafter referred to asthe cited TM No.13),  “baby care with design” trademark No.32939508 (hereinafter referred to as the cited TM No.14). The applicant of the trademark applied and the applicants of the cited TM NO.1 and NO.4 are related companies with the same legal representative ,so there is no conflict of rights. The trademark applied has been widely publicized and gained certain recognition. Based on the above, It is request for that the application for registration of the trademarkshould be preliminarily approved.

The applicant has submitted the following main evidences to our office:

the original coexistence agreement and relevant qualification documents, certification of authorization, copyright registration Certificate, using and selling products, company publicizing and using evidence, product purchase orders, express delivery contracts, etc.

The cited TM No. 2 expired on November 6, 2019, and more than 1 year had past since the date of expiration when the reexamination was initiated.

During the reexamination, it is found out that the applicant has submitted to our bureau the original coexistence agreement which is jointly signed with the owners of the cited trademark No.1 and No.4.

In view of the fact that the holders of the cited TM No.1 and No.4. have given written consent to the applicant in using and registing the trademark in the the designated goods in China, we deem that they no longer constitutes the obstacles of prior right to the trademark applied. In view of the cited TM No.2 has expired with no renewal, causing the lost of the exclusive right. In addition,it has been expired for more than 1 year, therefore, the cited TM No.2 no longer constitutes obstacles as prior right to the registration of the trademark applied.

The application trademark and cited trademark No.3 and No.5 to No.14 are different in character component, pronounciation, meaning, etc, do not constitute any similarity, hence will not cause any confusion for the related public to be used on the same or similar goods.

Therefore, the trademark applied does not constitute similar trademark to the cited TM No. 3, No.5 to No.14 to be used on the same or similar goods.

In accordance with Article 28 of the Trademark Law of the people’s Republic of China, we hereby decide as follows:

The application for trademark registration on the reexamined goods is preliminarily approved.