[IP CHINA] "Milan" approved to be registered as a Trademark
Trademark applicants who try to apply for trademarks with geographical names in China often meet difficulties due to the article 10.2 of the China Trademark law, which forbids names of any administrative division at or above Country level or the name of any foreign place known by the pubic to be used as trademark.
However, there are exceptions. The recent case of the "米兰" (Mi-Lan) trademark is a good example.
Milan, known as 米兰 (Mi-Lan) to the public in China is a famous Italian city. And Jiangxi Milan, a major player in the field of wedding dresses and wedding photography industry from Jiangxi Province, started its business under the brand "米兰" (Chinese equivalent of Milan) since late 1980s. In 1999, it obtained its first trademark registration which is composed of traditional Chinese character for "Milan" and designated for services of photograph shooting. In 2012, it obtained the registration for the same mark in simplified Chinese characters "米兰" (Mi-Lan) in Class 41.
In 2019, a natural person filed an invalidation action against the mark on the grounds that Milan is a famous geographical name in Italy and the registration of Jiangxi Milan's trademarks is in violation of the article 10.2 of the Trademark Law. In October 2020, the CNIPA made the decision to support the request and invalidated the mark. Jiangxi Milan soon filed a litigation before the Beijing IP Court but the outcome wasn't to its favor. It then appealed before the Beijing High Court which later overturned the CNIPA's decision.
The Court supported the evidence filed by Jiangxi Milan, which has proved that, through continuous and extensive marketing use, the mark had established a secondary meaning other than the indication of a geographic name. According to the final ruling, the registration of the disputed mark on its core services related to photography and video production has been maintained but its registration on other services has been invalidated.
It is worth mentioning that one of Jiangxi Milan's arguments was that, in addition to the name of a famous Italian city, the word "米兰" also refers to aglaia odorata (a flower shown on the below picture) in Chinese language. But the Court dismissed the claim and deemed that "米兰" is better known as a city name than a flower name among the public.
Geographical names, including names of foreign countries, cities and areas cannot be registered or used as a trademark, and the trademark applications which contains geographical names often encounter very high possibility of rejection. In recent years, the CNIPA has become stricter when examining trademarks containing geographical names. This case could be served as a reference for trademark prosecutions in China involving geographic names.
Fundamentally, the article 10.2 of the Trademark Law aims to avoid misunderstandings or confusion by the Chinese public regarding the origin of production of the products. So in the scenarios of:
- when a geographical name contains a different overall meaning apart from indicating a geographical name; or
- when a geographical name has acquired a secondary meaning through extensive use and has been acknowledged by the relevant public,
the mark shall not fall under the circumstances referred by such article. Its registration thus does not violate the prohibition clause and should be approved for registration.
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.