(By Luo Yanjie) According to the Trademark Law, the geographical names of administrative divisions at or above the county level, and foreign geographical names well-known to the public shall not be used as trademarks, except for geographical names that have other meanings or are not geographically-oriented. However, under certain circumstances, geographical trademarks shall, if they are of sufficient distinctiveness as a whole, may be considered to have the requisite requirements of distinctiveness. In today’s post, we will introduce such a typical case for our readers.
Introduction to the Case:
Plaintiff: Munich Re Group
Defendant: Trademark Review and Adjudication Board (the “TRAB”)
Court of first instance: Beijing No.1 Intermediate People’s Court No.:（2012）一中知行初字第3335号
Court of second instance: Beijing Higher People’s Court No.:（2013）高行终字第884号
On January 14, 2010, Munich Re Group applied to protect its “Munich RE and its picture” (the “disputed trademark”) with global number 1024730, through the registrations for territorial extension under Class 36 for insurance and financial service. On August 11, 2010, the Trademark Office issued a dismissal notice to the Munich Re Group, announcing that “Munich” that is a well-known foreign geographical name that shall not be used as a trademark, thus resulting in the dismissal of its registration.
Dissatisfied with the dismissal notice, Munich Re Group applied for review with the TRAB and provided substantial evidence proving that the disputed trademark has acquired distinctiveness through use. However, the TRAB still rejected the review of Munich Re Group. Still dissatisfied with the rejection, Munich Re Group brought the case to the court.
The Beijing No.1 Intermediate People’s Court maintained the rejection of the TRAB, but Munich Re Group further appealed. Finally, the Beijing Higher People’s Court heard the case and decided the following:
- The disputed trademark consisted of the text “Munich Re” and its pattern. Even though “Munich” is the name of a well-known German city, the use of “Munich” in dispute was only part of the disputed trademark.
- Munich Re Group provided substantial evidence proving that Munich Re can be considered an abbreviation of “MUNICH REINSURANCE”, thus meaning that the relevant public is unlikely to consider the disputed trademark as a geographical place.
For these reasons, the Beijing Higher People’s Court supported the claim of the Munich Re Group and revoked the rejection of the TRAB.
- Why should a geographical name not be used as a trademark?
The Trademark Law clearly stipulates that geographical names of administrative divisions at or above the county level, as well as foreign geographical names well-known to the public, shall not be used as trademarks. Despite this, the Trademark Law also stipulates that geographical names that have other meanings or constitute part of a collective mark or certification mark can be used as trademarks. For example, “Phoenix” refers to a name of bird in one possible meaning. However, when “Phoenix” is used on products, the relevant public would deem “Phoenix” to be a trademark, and not the geographical name of Phoenix County in China.
Furthermore, despite the fact that no provision is stipulated in the Trademark Law, the reason why geographical names should not be used as trademarks is that the place of production are sometimes labeled on the product packaging. When geographical names are used as trademarks, this is likely to lead relevant public into thinking that the geographical name trademark and the place of production are associated and cause confusion. In addition, if a local enterprise uses other geographical names as trademarks, it is likely to cause confusion between the source of goods and the trademark, bringing inconvenience to the relevant public.
- The exception that the geographical names can be registered as trademarks.
Apart from the above-mentioned conditions, the geographical names that have other meanings can be registered as trademarks. The judgment tells us that the geographical names that are not the unique part of a trademark and that have acquired distinctiveness through use could also be registered as trademarks.
In this case, the disputed trademarks could be registered for the following reasons. In this case, the disputed trademark was a combination trademark, because the geographical name is only a single part of the disputed trademark and the text-based parts also include the geographical name and its pattern. Even though the disputed trademark includes the geographical name, the applicant is actually from Munich, Germany. Therefore, the relevant public won’t be misled into drawing erroneous associations with any resulting confusion. Furthermore, the Munich Re Group proved that the disputed trademark has been used and that the relevant public could make association between their services and the applicant. For these two reasons, the Beijing Higher People’s Court decided that the disputed trademark could be used as a trademark. Despite the fact that “Munich” was registered as a trademark, it should also be noted that the geographical name “Munich” could still be used reasonably and in good faith..