Over the No.20825877 "CHLO-ROPHYLL TEA-LEAF and figure" (trademark in dispute) trademark application case, Beijing High People's Court made a final judgment recently.
The trademark in dispute was filed by Nikko Pharmaceutical Company on August 1, 2016, certified to be used on Class 3 products, such as facial cleansers, wrinkle creams, acne creams, hair restorers and cosmetics. After examination, the Trademark Office (TMO) under the former State Administration for Industry and Commerce held that the trademark in dispute used on the designated products such as cosmetics directly reflects their materials, lacking distinctiveness required for being a trademark. Accordingly, the TMO decided to reject the application for registration.
Nikko Company filed a reexamination request to the former Trademark Review and Adjudication Board (TRAB), but suffered one more set-back on April 26, 2018.
The Company then brought the case to Beijing IP Court, arguing that the trademark in dispute was figure and word combination with distinctiveness and did not directly show the materials of the designated products such as cosmetics. Meanwhile, according to the principle of consistency of examination standard, No.3264287TOMI Chlorophyl (多妮葉綠素in Chinese) and figure trademark had been registered and the trademark in dispute should be approved.
Beijing IP Court held that "CHLO-ROPHYLL" in trademark in dispute can be translated as a green substance in plants (叶绿素in Chinese), "TEA-LEAF" the leaf on the tea plant (茶叶in Chinese) and the leaf figure lacking distinctiveness required for being a trademark. The registration of other trademarks cannot be regarded as the basis for that of the trademark in dispute. The Court rejected the complaint of Nikko Company in the first-instance judgment.
The disgruntled Company then appealed to Beijing High People's Court. After hearing, Beijing High held that the registration of other trade-marks the Company has argued cannot be regarded as the evidence for that of the trademark in dispute. In trademark in dispute, the meaning of the words is similar to that of the figure. The public will take it as the direct description of the materials and ingredients when the trademark in dispute is used on the designated products such as cosmetics, wrinkle creams and acne creams, in-stead of the mark indicating the source of goods. In this connection, Beijing High rendered its final ruling against Nikko Company and upheld the first-instance decision.
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