(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.
(By Luo Yanjie) According to Chinese legislation, a mark which has a common meaning in normal ways may be registered as a trademark where it has acquired distinctiveness through use and is readily distinguishable. If being registered, the mark with a common meaning would be protected under the Trademark Law. However, in practice, a competitor may use the trademark against the exclusive right holder, with a defense that the trademark has common meaning. Today, we will introduce a successful case where the court is in favor of the exclusive right holder of the trademark.
(By Luo Yanjie) Abstract: A subsequently applied trademark must not be identical with or similar to a prior trademark. The trademark submitted for registration must have sufficient characteristics that allow it to be distinguishable. A few days ago, foreign media outlets reported that Audi had filed several trademarks application for model names, including SQ2, SQ4 and Q9. This is a sign that these vehicles will likely be sold in China in the future.
According to our research, further information about those trademarks is not yet available in Mainland China. This is likely either because Audi has not started the application procedures, or because the Trademark Office has not yet input Audi’s application information online. However, this does not affect our analysis on the outlook of those trademarks in mainland China.
(By Luo Yanjie) Abstract: China’s new Trademark Law still enforces the principle of “first to file,” but at the same time a prior user of a trademark only need prove to some extent that their prior use of a registered trademark had a degree of popularity, and need not prove that a subsequent user of the trademark “squatted” the trademark by registering it. If the board approves such prior use, the prior user will have the right to continue using the trademark in the original scope of use. “Improper means” as stated in Article 31 of the Trademark Law, refers to situations “where the applicant knows or should have known that the trademark had been used by others with a certain degree of influence, and preemptively registered the same, then such applicant shall be determined to have used improper means to register the mark.”
(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.
(By Luo Yanjie) Abstract: Only if another trademark would “mislead the public and injure the interests of the registrant of a well-known trademark, the well-known trademark could obtain “across protection”. The court shall apply on leniency protective conditions of “injure the interests of the registrant of a well-known trademark” to cross-protection for well-known trademark.
Generally speaking, the well-known trademark can get the trademark cross protection, in particular, the “cross-category” does not mean that the well-known trademark can obtain only related categories’ protection , not all categories. A case in our today’s post is about a well-known trademark failure to get the cross protection sharing with readers as follows，
In yesterday’s post, we introduced trans-class protection for well-known trademarks and the factors that might lead to this status being granted. Today, we would like to conclude by explaining situations in which well-known trademarks will not be granted trans-class protection.
III. Situations where trans-class protection will not be granted to well-known trademarks
As discussed above, well-known trademarks only enjoy trans-class protection when meeting the following conditions. Now, we will introduce some common situations where trans-class protection cannot be achieved:
It is reported that (Note: the link is in Chinese) Wakayama County of Japan recently announced that the trademark application for “Ji Zhou” (纪州) filed by a Hong Kong company on the Chinese mainland concerns a publicly well-know geographical name. The County has also filed an objection with the Chinese Trademark Office because this name is not appropriate to serve as a trademark. The report also stated that Wakayama County has been paying close attention to trademark applications in China since 2010 and has already had two objections granted against trademark applications for “Wakayama.” Today, we would like to discuss whether geographical names can be registered as trademarks:
Last year, the Supreme People’s Court issued the final decision in the protracted dispute between LACOSTE and CARTELO. The decision clarifies cases involving long brand history and could guide future hearings on similar disputes in courts of all levels. In the decision, LACOSTE lost the lawsuit, and no infringement was found on the part of CARTELO. In the judgment, the Court took the first steps towards establishing a system of “trademark coexistence,” which means the coexistence of similar trademarks in the same class, for use in China’s trademark cases. Today’s post will provide an analysis of the application of this system in China.
With the development of Internet, the video game once again gains the popularity. For instance, the well known “Angry Bird” has enjoyed a global download volume of more than 500 million times, and the name of it has been widely known as a brand. Therefore, more and more game companies choose to register the game name as trademarks in order to protect their brands. And the followings are the tips from Bridge IP Law Commentary in trademark registration:
I. What kind of game names can be registered as trademarks?