(By Luo Yanjie) The Audi A4, A6 and other series of Audi cars are popular classic cars in China. However, Audi’s trademark applications for the A4, A6 etc., are always rejected. In today’s post, we will introduce a typical case regarding these trademarks, followed by our analysis for our readers.

 

Introduction to the Case:

In January 2007, Audi China filed an application with the State Trademark Office to register its “A4” mark (the “disputed trademark”). The State Trademark Office upheld that “A4”, a common vehicle model, lacked distinctiveness. Based on this finding, the Trademark Office rejected Audi’s application. After Audi applied for a trademark reexamination with the Trademark Review and Adjudication Board (the “TRAB”), the TRAB held that, the disputed trademark comprised of the English Letter “A” and Arabic numeral “4” was so simple that it would be difficult to distinguish the function of the source of goods; in addition, it lacked distinctiveness, a requirement pursuant to the Trademark Law. Again, based on these findings, the TRAB rejected Audi’s application for reexamination.

The Beijing No.1 Intermediate People’s Court ruled against Audi for the following reasons: marks like “A4” and “A8” comprised entirely of English Letters and Arabic numerals are only able to represent particular models of Audi’s cars; in addition, they lack distinctiveness and do not have the effect of distinguishing the sources of said goods – thus, the disputed trademark would not be registered. After affirmation, no reports or information have surfaced showing that Audi appealed the court’s decision.

 

Lawyer’s Comments:

I. Trademarks shall have distinctiveness.

 

As provided in Article 9 of the Trademark Law, a trademark seeking registration shall be so distinctive as to be distinguishable, meaning that the trademark should have the requisite distinctiveness. In other words, marks for trademark applications should have the effect of distinguishing goods so the relevant public could distinguish the source of goods in accordance with such marks. The Trademark Law has listed several kinds of conditions under which lack of distinctiveness will be found; for example, marks that merely indicate the principal raw materials, and marks that indicate the function of the goods. Actually, another condition is that marks shall not be so simple such that they lack distinctive characteristics, such as geometric figures, numbers, and signs. According to the law, those marks are so common as to be nearly impossible to serve as indicators of the source of a good.

In this case, the Trademark Office and courts rejected Audi’s application for the “A4” trademark, primarily based on the aforementioned reasoning that “A4” is a common model for cars and lacks distinctiveness.

II. The “A4” mark, a simple composition of letters and numbers, is not entirely indistinctive. 

 

The Trademark Law also stipulates that, as for a non-distinctive mark, distinctiveness can be realized subsequent to use of the mark. Article 11 as states that “A mark to which the above provisions are applicable but which has acquired distinctiveness through use and is readily distinguishable may be registered as a trademark.” There are several examples of common marks that have acquired distinctiveness through use, such as Tsingtao Beer and Liangmianzhi Toothpaste (liangmianzhi is the raw material in its toothpaste). In this case, Audi thought that its “A4” mark, which once had no distinctiveness, was readily distinguishable through commercial use.

In the Author’s opinion, although Audi’s A4 car actually is very famous in China, in practice, Audi’s use of the “A4” mark is not in accordance with the spirit of the Trademark Law, because its use of“A4” is merely a model number of a particular car it manufactures, and does not function as a trademark. When it uses “A4” on its cars, it also uses its trademark comprised of several words and circles. Therefore, Audi’s use of “A4” does not embody the requisite distinctiveness. Actually, in practice, where marks comprised of letters and numbers are a common marking method for car models, if a company registers such mark as a trademark, it is not conducive to industrial competiveness. Therefore, based on this reasoning, the author supports the court’s decision.

 

Lawyer Contacts

You Yunting：86-21-52134918  youyunting@debund.com/yytbest@gmail.com

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