Hunter Boots is a long-established brand of specialist boots in the UK. Previously, the company applied to the former Trademark Office under the State Administration for Industry and Commerce （SAIC） to register No.22801511 HUNTER trademark （the disputed trademark）， but failed. After a roller-coaster run at reexamination and court trial, it was awarded a nod from the Beijing High People's Court.
The trademark in dispute was filed by Hunter Boots for registration on February 13, 2017, requesting certified to be used on Class 3 goods including shoe creams, waxes and abrasives. On November 12, 2017, the former TMO rejected the application as it cited No.1581105 猎人HUNTER and its figure （No.1 cited trademark） and No.4591919 HUNTER trademark （No.2 cited trademark）。
The disgruntled Hunter Boots pled to the former Trademark Reexamination and Adjudication Board （TRAB） for reexamination, aborting use on abrasives, and furnished a co-existing agreement signed with the right holder of No.2 cited trademark and other evidence.
After examination, the TRAB rejected the request, holding that the trademark in dispute on which goods certified to be used （excluding abrasives） is with No.1 cited trademark, and the two trademarks are not similar trademarks when used on the same products. In parallel, the trademark in dispute is the same in character structure with No.2 cited trademark, causing confusion among the public when used on similar goods including shoe creams and leather creams. In this connection, the two trademarks constitute similarity. Although Hunter Boots provided evidence such as a trademark co-existing agreement, the possibility of confusion in the market could not be ruled out.
Hunter Boots refused to call it a day and sought a solution at the Beijing IP Court.
The court held that there were certain differences in visual effect between the trademark in dispute and No.2 cited trademark. Given the fact that the trademark in dispute has the written approval from the right holder of No.2 cited trademark, and no evidence indicates the co-existence of the two trademarks would cause public confusion, the No.2 cited trademark shall not serve as a barrier of prior rights for the registration of trademark in dispute. So the IP Court revoked the decision made by the TRAB.
This time, CNIPA, the current higher-up of the TRAB, took the case further to Beijing High.
Beijing High basically echoed all the above reasoning of the lower court in visual effect, co-existing agreement, no confusion of the co-existence of the two trademarks. Consequently, the appellate court vacated the TRAB decision and upheld the one of the IP court.（by Wang Jing）
（Editor Jiang Shuo）
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