Visual, Phonetic, and Conceptual: The Three Pillars of Trademark Similarity (Article 30)

When the CNIPA cites a prior mark as a barrier to registration, it is typically applying Article 30 of the Trademark Law — the standard relative grounds refusal. Article 30 prohibits the registration of a mark that is identical or similar to an existing mark on the same or similar goods or services. Understanding how the CNIPA assesses “similarity” — and how this assessment interacts with the subclass system — is essential for both applicants and opponents.

The Legal Basis: Article 30

Article 30 provides that where a trade mark applied for registration is identical with or similar to another person’s trade mark which has already been registered or has been given preliminary approval for use on the same or similar goods, the application shall be rejected.

This is a relative ground for refusal, meaning it depends on the existence of a prior right. The CNIPA conducts an ex officio search of the register during examination and will issue a refusal notice citing any marks it considers to be in conflict.

The Three Dimensions of Mark Similarity

The CNIPA assesses similarity across three dimensions, weighing the overall impression created by the marks:

Visual Similarity

This examines the appearance of the marks: the structure, arrangement of characters or letters, the use of design elements, and the overall visual impression. For Chinese character marks, visual similarity considers the number of strokes, the structural composition, and the overall appearance of the characters. For Latin-letter marks, letter sequence, length, and shared elements are assessed.

Phonetic Similarity

In China, phonetic similarity extends beyond how marks sound in their original language. The assessment includes the mark’s pronunciation in Mandarin Chinese, its Pinyin romanisation, and — for Chinese character marks — the tonal qualities of the characters. This is a critical dimension because Chinese consumers frequently encounter and recall marks through their Chinese pronunciation.

For foreign-language marks, the CNIPA considers how the average Chinese consumer would pronounce the mark, which may differ significantly from the original language pronunciation.

Conceptual (Meaning) Similarity

This evaluates whether the marks convey the same or a similar idea. Conceptual similarity is particularly important for Chinese character marks, where two visually different characters may share the same meaning. It also captures translations: an English word mark and a Chinese character mark with the same meaning may be found conceptually similar.

The Dominant Element Rule

For composite marks — marks combining word and design elements — the CNIPA applies the dominant element rule. This principle holds that the most distinctive and prominent component of the mark carries the greatest weight in the similarity assessment.

In practice, word elements typically dominate over design elements because consumers use words to identify and request products. A composite mark with a distinctive logo but a common or similar word element may still be found confusingly similar to a word mark. The logo, while adding some visual distinction, may not be sufficient to overcome the similarity in the dominant word component.

The Role of the Subclass System

The similarity of goods and services is determined primarily by the subclass system (covered in a separate article). During examination, the CNIPA applies a mechanical approach: if the marks are similar and the goods fall within the same subclass, the application will be refused. If the goods are in different subclasses, the refusal is unlikely — even if the marks are identical.

In opposition and invalidation proceedings, there is somewhat more flexibility. The TRAB and the courts may consider broader arguments about the relationship between goods, particularly where bad faith is apparent. But during initial examination, the subclass code is largely determinative.

Overall Impression vs. Element-by-Element Comparison

The CNIPA’s examination guidelines emphasise that similarity should be assessed based on the overall impression created by the marks, rather than a side-by-side analysis of individual elements. The average consumer perceives marks as a whole, with imperfect recollection, and the assessment should reflect this reality.

However, in practice, examiners often focus heavily on the dominant element. If the dominant word element is identical or very similar, the overall impression is typically found to be similar even if secondary elements differ.

Responding to an Article 30 Refusal

When the CNIPA issues a refusal citing a prior mark, the applicant has 15 days to file an appeal with the TRAB. Strategies for overcoming the refusal include:

• Arguing dissimilarity: Present detailed arguments explaining why the marks are visually, phonetically, and conceptually distinguishable.
• Distinguishing the goods: If the goods fall in different subclasses, argue that there is no similarity of goods, even if the examiner has found otherwise.
• Evidence of coexistence: Show that the marks have coexisted in the Chinese market without confusion.
• Cancelling the cited mark: If the prior mark is vulnerable to non-use cancellation (three consecutive years of non-use), filing a cancellation action can remove the obstacle.

Strategic Recommendations

• Search in Chinese: A clearance search must include Chinese character marks, Pinyin equivalents, and conceptual translations. Searching only in English or Latin characters will miss critical conflicts.
• Develop a distinctive Chinese mark: Create a Chinese character mark that is visually, phonetically, and conceptually distinct from existing marks in the relevant subclasses.
• File broadly across subclasses: Even if the marks are similar, different subclasses may allow coexistence. Understanding the subclass structure is key to filing strategy.
• Monitor for non-use: If the blocking mark has not been used for three years, a non-use cancellation action is often the most efficient solution.

Key Takeaway

Article 30 is the standard relative grounds barrier in China, and the similarity assessment rests on visual, phonetic, and conceptual comparison weighted by the dominant element. For foreign brands, the phonetic dimension — particularly Mandarin pronunciation and Pinyin — is often the most underestimated factor. Combined with the mechanical subclass system for goods similarity, China’s approach demands a localised filing strategy that accounts for how Chinese consumers see, hear, and understand trade marks.