A company applied for registration of the "
" mark ("Disputed Mark") on
"agricultural machinery" on November 1, 2021, and was
refused. During the review, the CNIPA determined that the
representation of the Disputed Mark is simple, it will be difficult
for the relevant public to recognize it as a trademark to
distinguish the source of the goods if registered on the designated
goods. The submitted evidence, including the product promotional
videos and brochures, the market share of its product from the
China Agricultural Machinery Industry Association, statements on
sales, store photos, audit reports, tax payment certificates,
honorary certificates, award certificates, exhibition and campaign
pictures, articles on periodicals and magazines, CCTV news reports,
etc., are insufficient to prove that the Disputed Mark has been
used to obtain distinctive features and can easily be identified.
Therefore, the Dispute Mark shall be rejected based on Article
11.1.3 of the Trademark Law.
The applicant appealed to the court, and supplemented additional evidence of domestic and foreign sales contracts and invoices, overseas trademark registration certificates, granted invention patent information, etc. to prove that after extensive use and publicity, the Disputed Mark has gained a high reputation and has established a unique corresponding relationship with the applicant, thereby bearing the distinctiveness to identify the source of goods.
The Beijing Intellectual Property Court found that:
First, the Disputed Mark is a color combination consisting of red and light gray. Its color and combination are relatively ordinary, and its expression is relatively common. If the color combination specified by the Disputed Mark is used on "agricultural machinery," the relevant public tends to recognize it as an expression of the appearance and decoration of the goods rather than a mark that distinguishes the source of goods. Therefore, the Disputed Mark does not have the inherent distinctive features that a trademark should have.
Second, according to the evidence submitted, when the applicant uses a red and light gray color combination in designated locations on agricultural machinery such as harvesters and tractors, it usually also displays the "Wo De in Chinese" logo on a prominent position on the fuselage. When relevant public seeing agricultural machinery products, it is easier to recognize the word mark rather than the color as a mark to distinguish the source of the product.
Finally, regarding the applicant's claim that the Disputed Mark has acquired distinctive features through use, this court found that although the evidence can prove that the agricultural machinery produced by the applicant in recent years has a relatively high sales share in the industry and has also achieved a certain degree of fame, the use and publicity reports and honorary materials mainly reflect the commercial use of "Wo De in Chinese" mark. In most cases, the Disputed Mark was only used as the background color of "Wo De in Chinese." The said evidence was insufficient to prove that the Disputed Mark has obtained distinctive features and can act as an identification for ordinary consumers to distinguish the source of goods just by being used as the background color of a logo such as "Wo De in Chinese."
In sum, the existing evidence is insufficient to prove that the Disputed Mark has gained a certain degree of fame in actual use and can play a role in distinguishing the source of goods, thereby obtaining distinctiveness that can be approved for registration.
The applicant appealed to the second instance court, however, the appeal was dismissed and the original judgment was affirmed.
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