China: Unitalen Representing ALSTOM Won Administrative Lawsuits On Review Of Rejected Trademarks

Last Updated: 17 February 2016
Article by Unitalen Attorneys At Law

ALSTOM is a global leading enterprise in the fields of rail transit, electrical equipment and power transmission infrastructure, well-known for its innovative and environmental technology. ALSTOM, with a presence in over 70 countries and regions throughout the world and with more than 93,500 employees in total, has been participating in Chinese construction for more than 50 years, and is a long-term reliable partner of China in the fields of rail transit, electrical equipment and power transmission infrastructure.

ALSTOM has applied for international registration of trademarks No. 1147882 "Designing fluidity" (English) and No. 1147880 "Concevior la fluidite" (French), and requested extension of territorial protection with China Trademark Office. China Trademark Office (CTMO) as well as Trademark Review and Adjudication Board (TRAB) both believed that the trademarks at dispute were composed of common advertising expressions and descriptive words that would not be recognized by consumers as trademarks and distinguish the origin of goods or services. They were refused for protection due to lack of distinctiveness. Dissatisfied with the decisions, ALSTOM further entrusted Unitalen to institute administrative lawsuits against TRAB at Beijing Intellectual Property Court with respect to the trademarks at dispute.

Based on professional practice in trademark application and profound understanding of administrative lawsuit proceedings, Unitalen's team of attorneys and agents put forward the following grounds at the lawsuit stage:

1. Judgment on distinctiveness of trademarks in foreign language should take into account of both the objective meaning and the cognitive ability of relevant public;

2. Objective meaning of trademarks was not directly descriptive with respect to the designated goods and services, and the trademarks are not devoid of distinctiveness;

3. There is no evidence to support TRAB's conclusion that the disputed trademarks had become advertising expressions, and;

4. The disputed trademarks had been approved for registration in other English- and French-speaking countries, sufficient to support that the trademarks were distinctive enough for registration.

After hearing, Beijing Intellectual Property Court has accepted Unitalen's grounds and expressed their opinions as follow:

  • The disputed trademarks are not devoid of distinctiveness with respect to the designated goods and services (relative distinctiveness), and are not devoid of distinctiveness with respect to any goods and services (absolute distinctiveness).
  • As far as relative distinctiveness is concerned, the Court analyzed from the legislative intent in Article 11 of Trademark Act that the distinctiveness, on one hand, requires that a trademark has the identification effect for consumers to distinguish the origins of goods and services, and on the other hand, should avoid affecting the fair use of descriptive marks by the businesses of the same industry. For the trademark in French language for which the consumers do not have the cognitive ability, if the businesses of the same industry do not use the mark to describe the designated goods and services in the daily operating activities, it is improper to judge the distinctiveness only based on the objective meaning of trademark. Even if the objective meaning of a trademark in English or French is taken into account, the trademark is not directly descriptive with respect to the designated goods and services. Therefore, the disputed trademarks were distinctive with respect to the designated goods and services.
  • With respect to the issue of absolute distinctiveness, the Court expressively pointed out that in general it should be taken into account whether the visual expression of the mark is in conformance with the general cognition of a trademark by relevant public. If not, the trademark is not distinctive with respect to any commodity or service, e.g. advertising expression, because relevant public generally will not identify an advertising expression as a trademark. The appearance expression of the disputed trademarks is in conformance with the general cognition of relevant public for a word trademark, and is not in conformance with the general cognition of relevant public for an advertising expression. Therefore, it is improper for TRAB to decide that the disputed trademarks were not distinctive.

Accordingly, Beijing Intellectual Property Court judged that the decisions made by TRAB should be fully revoked and shall be re-made.

[Attorney's comment] This series of administrative lawsuits has included in-depth analysis of and reasoning on the judgment of distinctiveness of trademarks in foreign languages. In particular it explicitly indicates that "a trademark has objective meaning ≠ it lacks distinctiveness", which has provided guiding significance to the application of Article 11(1)(iii) of Trademark Law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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