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Mr. Jason WANG, partner at Beijing East IP Law Firm
Ms. Yan ZHANG, partner at Beijing East IP Law Firm
In June 2015, the Beijing High Court (second instance court) sustained the decisions of the Beijing First Intermediate Court (first instance court) and the Trademark Review and Adjudication Board (TRAB), and held that the opposed mark “FANG DI MEI in Chinese” (FREDDIE MAC in Chinese) constitutes similar to the cited mark “FREDDIE MAC” owned by Federal Home Loan Mortgage Corporation (“Freddie Mac”) in terms of similar services in Class 36. The key issue of this case is the determination of similarity between Chinese equivalent and English mark. Beijing East IP Ltd. successfully represented Freddie Mac in the opposition appeal proceeding. Mr. Jason WANG and Ms. Yan ZHANG, partners and PRC attorneys-at-law at Beijing East IP Law Firm, successfully represented Freddie Mac in the court proceedings.
Freddie Mac is one of two largest U.S. residential mortgage finance agencies. Many press media use “Freddie Mac” as acronym for “Federal Home Loan Mortgage Corporation,” and Chinese media reports frequently refer to it as “FANG DI MEI in Chinese (Freddie Mac).” For instance, when the Securities Time (Janunary12, 2006) described the Chinese government’s managing policy of optimizing the foreign exchange reserve, the American analyst claimed that it is unlikely for China to completely discard the US Treasury Securities and the bonds of “FANG DI MEI in Chinese (Freddie Mac)”, the Federal Housing Agency. The 21st Century Economic Reports claimed that according to the Reports on Foreign Portfolio Holdings of U.S. Securities released by the U.S. Department of the Treasury on June 30, 2007, China is the largest holder of the bonds of “FANG DI MEI in Chinese (Freddie Mac).”
The opposed mark “FANG DI MEI in Chinese” is applied by a local real estate broker Company in China. After publication for opposition, Freddie Mac filed an opposition against the opposed mark in September 2010, but failed. Then, Freddie Mac filed the opposition appeal before the TRAB in June 2012. In October 2013, the TRAB held in its decision [Shang Ping Zi (2013) No.94769] that the services of “insurance brokerage, financial loan, etc.” designated under the opposed mark in Class 36 and the services of “financial services in the field of mortgage loans and mortgage-backed or mortgage related bonds” under the cited mark “FREDDIE MAC” in Class 36 are related to a relatively large extent in terms of purpose, way and content of services, and thus constitute similar services. The cited mark “FREDDIE MAC” bears strong distinctiveness, and it is the most commonly used Chinese translation of “FANG DI MEI in Chinese.” Based on the evidence submitted to the TRAB by Freddie Mac, the cited mark “FREDDIE MAC” has enjoyed high reputation on designated financial services. The opposed mark and the cited mark do not differ much in terms of meaning, and thus constitute similar marks on similar services.
The Beijing First Intermediate Court and the Beijing High Court rendered the court decisions respectively in December 2014 and June 2015 [Beijing First Intermediate Court Administrative Judgment (2014)Yi Zhong Xing Zi No. 736, Beijing High Court Administrative Judgment (2015) Gao Xing Zhong Zi No.1469], sustaining the TRAB decision. The two instance court decisions held as follows: To determine whether two marks are similar or not, the fame of the mark and relatedness of goods or services, the extent of similarity may be factors of consideration. However, the extent of similarity of marks per ser shall be the basic factor to judge whether the marks are similar or not. In this specific case, the evidence has proven that the Chinese characters “FANG DI MEI in Chinese,” as a translation of the English word “FREDDIE MAC,” have a corresponding association to the English word “FREDDIE MAC,” and enjoy certain fame for financial services in the field of mortgage loans. The opposed mark “FANG DI MEI in Chinese” is identical to the Chinese translation of the cited mark “FREDDIE MAC,” and thus constitutes a similar mark with the cited mark. Both the services of “insurance brokerage, etc.” under the opposed mark and the services of “financial services in the field of mortgage loans and mortgage-backed or mortgage related bonds” under the cited mark are financial services, and are related in regards to the function, use and consumer base. Therefore, the services under the two marks shall be deemed similar. Considering the opposed mark is identical to the Chinese translation of the cited mark, which bears strong distinctiveness, and the cited mark enjoys fame on financial services in China, the opposed mark and the cited mark constitute similar marks in terms of similar services.
Analysis & Comments:
The key issue of this case is whether “FANG DI MEI in Chinese” is confusingly similar to “FREDDIE MAC” and has a corresponding association with “FREDDIE MAC.” Based on the fact and evidence, the TRAB, the Beijing First Intermediate Court and the Beijing High Court came to consistent decisions in this case. In fact, quite a few precedents affirmed the corresponding association between Chinese equivalent and English mark and further determined the similarity thereof. However, there are also cases where the courts denied the similarity between Chinese equivalent and English mark. The key point of such type of cases is evidence collection. In this specific case, Freddie Mac has successfully collected and submitted a massive amount of evidence, including the explanations of authoritative dictionaries and public media reports, to prove that “FANG DI MEI in Chinese” is the corresponding translation of “FREDDIE MAC.”
In addition, the TRAB and the Courts have broken through the Classification of Similar Goods and Services issued by the Chinese Trademark Office based on Nice Agreement in this case of “FREDDIE MAC”, and confirmed that the services of “insurance brokerage” (Subclass 3601) and “financial services in the field of mortgage loans and mortgage-backed or mortgage-related bonds” (Subclass 3602) constitute similar services.