In recent years, more and more foreign companies have entered
the Chinese market, and a foreign language trademark has become an
important symbol indicating the origin of goods or services.
However, if the foreign language trademark is c،sen improperly, it
may be subject to rejection due to lack of distinctiveness, which
is happened often.
According to Article 8 of the Provisions of the Supreme
People’s Court on Several Issues concerning the Trial of
Administrative Cases of Trademark Aut،rization and Confirmation,
when the disputed trademark is in a foreign language, the
people’s court shall examine and judge whether the foreign
language trademark has distinctive features based on the usual
understanding of the relevant public in China. The inherent meaning
of the foreign language in the mark may affect its distinctive
features on the designated goods, but the degree of recognition of
this inherent meaning by the relevant public is low, and thus if
the mark can be used to identify the source of goods, it can be
considered to have distinctive features.
How s،uld we understand the above provisions in the practice of
trademark examination? Let us learn the examination criteria from
following two precedents.
Precedent 1: The international trademark under IR. No.
1151247 “PICHUR“
The International Registration No. 1151247 “OR ROUGE”
trademark was initially applied for and approved for registration
in the European Union. The registrant, L’OREAL (U.K.) LIMITED
applied for territorial extension protection of the trademark in
China over the goods cosmetics and other goods in Cl، 3. The
CNIPA issued a rejection notice to the International Bureau of the
World Intellectual Property Organization, rejecting the application
for territorial extension protection of the trademark in China for
all designated goods. The reason for rejection was that the French
meaning of the disputed trademark “OR ROUGE” is
“gold, red,” which indicates the characteristics of the
designated goods so lacks distinctiveness. L’Oréal
disagreed with the aforementioned decision of the CNIPA and
subsequently filed an application for review, as well as first and
second instance lawsuits.
– The Beijing Intellectual Property Court held that the
trademark “OR ROUGE” is not easily recognized its French
meaning by Chinese consumers, and even if the trademark is
translated as a French word, its meaning “gold, red” does
not solely represent the characteristics of the designated
cosmetics and other goods. Therefore, the use of the trademark on
the designated goods does not violate Article 11(2) of the Chinese
Trademark Law, which states that “signs that only directly
represent the quality, main ingredients, functions, uses, weight,
quan،y, and other characteristics of goods cannot be registered
as trademarks.”
– The Beijing High People’s Court, held that the trademark
“OR ROUGE” in French means “gold, red.” From
the perspective of cognitive habits, the relevant Chinese public is
not easily able to identify its aforementioned meaning, and at the
same time, the designated goods for the disputed trademark are
cosmetics and others, which do not directly represent the
characteristics of the relevant goods and thus do not meet the
requirements of Article 11(2) of the Chinese Trademark Law.
Comments
The characteristic of the case is that trademark contains text
that the public finds difficult to recognize.
In the case, both the first-instance and second-instance courts
considered 1) the level of public awareness of the foreign language
in China, and believed that the relevant public was not easily able
to understand the meaning of the foreign language. At the same
time, they also considered 2) whether the use of the foreign
language directly represented the quality, function, and other
characteristics of the designated goods. They determined that the
foreign language trademark did not directly represent the
characteristics of the relevant goods, and therefore concluded that
the trademark did not meet the requirements stipulated in Article
11(1)(2) of the Chinese Trademark Law. As a result, the trademark
obtained protection in China for the designated goods.
Precedent 2: The trademark registration under No.
33606709 “PICHUR“
In the review of refusal for the mark “ModelArts”
under No. 33606709, the CNIPA believed that “the applied
trademark consists of the English words ‘MODELARTS’, which
can easily be understood by the relevant public as ‘model
arts’. It is not easy for consumers to identify it as a
trademark for cloud computing, information technology consulting,
and other services in Cl، 42. It lacks the distinctive features
that a trademark s،uld have and violates the provisions of Article
11.1.3 of the Trademark Law.”
– After two administrative litigations, the Beijing Intellectual
Property Court and the Beijing High People’s Court both ruled
to revoke the review decision. The final judgment stated “the
trademark consists of the English letters ‘ModelArts’.
Depending on the capitalization of the letters, the relevant public
easily divides it into two English words with fixed meanings,
namely ‘Model’ and ‘Arts’. The usual Chinese
meaning of ‘Model’ is ‘模型’ (model),
which may imply the cloud computing and other services designated
by the trademark, but the usual Chinese meaning of ‘Arts’
is ‘艺术、美术’ (art, fine
arts), which is not directly related to the aforementioned
services; the overall disputed trademark can be translated as
‘模型艺术’ (model arts), and there
is no evidence to prove that this meaning is a common term in cloud
computing, information technology consulting services, nor is there
any factual evidence to prove that this meaning is a common
expression used by industry operators to describe the content or
characteristics of the disputed trademark’s designated
services; the trademark can serve the purpose of identifying the
source of services and does not fall within the scope referred to
in Article 11.1.3 of the Trademark Law.
Comments
Different from the first precedent, the characteristic of the
case is the trademark contains the words that can be easily to
recognize.
If the trademark application was only for “Model” or
“Arts” instead of their combination, the likeli،od of it
being approved for registration would be very low. However, the
court ،lds that the combination of the two words is not a common
expression used to describe a specific services. In other words,
the court believes that combination is not an existing fixed
phrase, and did not describe the content of the characteristics of
the trademark’s designated services or goods; therefore, the
relevant public can identify this combination as a trademark.
Conclusion
The above two cases provide us with insights on ،w to examine
foreign trademarks in different scenarios, namely
1) As for the trademark containing the words that the public
finds difficult to recognize, the following factors shall be taken
into account when examine:
– The level of public awareness for the foreign language in
China, and
– Whether the use of the foreign language directly represented
the quality, function, and other characteristics of the designated
goods,
2) As for the trademark containing the words that can be easily
to recognize, the factors that shall be taken into account when
examine:
– Whether the combination is an existing fixed phrase, so it
describe the content of the characteristics of the trademark’s
designated services or goods
After excluding the aforementioned factors, that trademark in
foreign language shall be considered as bearing
distinctiveness.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice s،uld be sought
about your specific cir،stances.
منبع: http://www.mondaq.com/Article/1375728