Conclusion—The distinctiveness of the trademark in dispute should be judged on the basis of the overall constituent elements and meaning. The combination of the meanings of the word roots after splitting should not be used to determine the trademark’s intrinsic meaning
Recently, we represented a France renowned brand in an administrative litigation regarding a trademark refusal review case and won before the Supreme People’s Court (hereinafter referred to as “the SPC”). The SPC ruled to revoke the judgments of the first and second instance and the rejection decision made by the CNIPA, and ordered the CNIPA to make a new decision.
The trademark in dispute is a trademark consisting of English letters. The CNIPA, the court of the first and second instance held that the trademark in dispute can be divided into two parts: the first three letters can be translated as “生物(bio)” and the later five letters as “真皮(derma)” in Chinese, and the combination of the two can be translated as “生物真皮(bio derma)”. Therefore, the court ruled that the use of the trademark in dispute on the goods of “Pharmaceutical preparations for skin care” directly indicates the raw materials, functions, uses, as well as other features of the goods, constituting the circumstances stipulated by Article 11(2) of China’s Trademark Law, and that the use of the trademark in dispute on the goods of “Dietetic foods adapted for medical purposes and Vitamin preparations”would likely to mislead the public in terms of the quality, constituting the circumstances stipulated by the Article 10(7) of 2013 Trademark Law.
Entrusted by the client, we field retrial petition with the SPC for the use of the trademark in dispute on the three commodities of "pharmaceutical preparations; Skin care (Pharmaceutical preparations for -; Pharmaceutical preparation for skin care". We claimed 1. The trademark in dispute is an invented word created by the applicant rather than an inherent English word. The trademark as a whole has no meaning, and is not a description of the functional use of the designated goods of "pharmaceutical preparations; Skin care (Pharmaceutical preparations for -; Pharmaceutical preparation for skin care". It will not cause misunderstanding to the relevant public about the functional use and other characteristics of the designated goods. The relevant public in China will not identify the trademark in dispute by dividing it into two parts. Moreover, the disputed trademark has never been interpreted as “生物真皮(bio derma)” in the English dictionary. In the common knowledge of the relevant public in China, the disputed trademark is an invented word with no specific meaning. 2. The trademark in dispute enjoys a high popularity and strong influence in the Chinese market after its use and advertisement for a long time. The trademark in dispute has formed a stable and unique correspondence with the applicant, which can distinguish the source of goods. Therefore, the disputed trademark should be approved for registration.
The SPC supported our claims and pointed out that the distinctiveness of the trademark in dispute should be judged on the basis of the overall constituent elements and meaning of the mark rather than dividing or splitting the specific element. The disputed trademark has played the role of identifying and distinguishing the source of goods. The SPC ruled that the trial courts’ judgment that the disputed trademark constituted the circumstances prescribed in Paragraph 1 (2) of Article 11 of the 2013 Trademark Law lacked factual and legal basis and should be corrected.
Recently, we represented a France renowned brand in an administrative litigation regarding a trademark refusal review case and won before the Supreme People’s Court (hereinafter referred to as “the SPC”). The SPC ruled to revoke the judgments of the first and second instance and the rejection decision made by the CNIPA, and ordered the CNIPA to make a new decision.
The trademark in dispute is a trademark consisting of English letters. The CNIPA, the court of the first and second instance held that the trademark in dispute can be divided into two parts: the first three letters can be translated as “生物(bio)” and the later five letters as “真皮(derma)” in Chinese, and the combination of the two can be translated as “生物真皮(bio derma)”. Therefore, the court ruled that the use of the trademark in dispute on the goods of “Pharmaceutical preparations for skin care” directly indicates the raw materials, functions, uses, as well as other features of the goods, constituting the circumstances stipulated by Article 11(2) of China’s Trademark Law, and that the use of the trademark in dispute on the goods of “Dietetic foods adapted for medical purposes and Vitamin preparations”would likely to mislead the public in terms of the quality, constituting the circumstances stipulated by the Article 10(7) of 2013 Trademark Law.
Entrusted by the client, we field retrial petition with the SPC for the use of the trademark in dispute on the three commodities of "pharmaceutical preparations; Skin care (Pharmaceutical preparations for -; Pharmaceutical preparation for skin care". We claimed 1. The trademark in dispute is an invented word created by the applicant rather than an inherent English word. The trademark as a whole has no meaning, and is not a description of the functional use of the designated goods of "pharmaceutical preparations; Skin care (Pharmaceutical preparations for -; Pharmaceutical preparation for skin care". It will not cause misunderstanding to the relevant public about the functional use and other characteristics of the designated goods. The relevant public in China will not identify the trademark in dispute by dividing it into two parts. Moreover, the disputed trademark has never been interpreted as “生物真皮(bio derma)” in the English dictionary. In the common knowledge of the relevant public in China, the disputed trademark is an invented word with no specific meaning. 2. The trademark in dispute enjoys a high popularity and strong influence in the Chinese market after its use and advertisement for a long time. The trademark in dispute has formed a stable and unique correspondence with the applicant, which can distinguish the source of goods. Therefore, the disputed trademark should be approved for registration.
The SPC supported our claims and pointed out that the distinctiveness of the trademark in dispute should be judged on the basis of the overall constituent elements and meaning of the mark rather than dividing or splitting the specific element. The disputed trademark has played the role of identifying and distinguishing the source of goods. The SPC ruled that the trial courts’ judgment that the disputed trademark constituted the circumstances prescribed in Paragraph 1 (2) of Article 11 of the 2013 Trademark Law lacked factual and legal basis and should be corrected.