Weekly China Trademark News Updates

June 8, 2022

1. The CNIPA released the “Notification on Public Solicitation of Comments on the Measures for the Administration and Protection of Collective and Certification Marks (Draft for Comment)”

In order to regulate the registration and use of collective marks and certification marks, maintain fair competition in the market order, guide the registrants of collective marks and certification marks to register ethically, exercise their rights appropriately, and protect their rights effectively, clarify the boundaries of rights while taking into account the legal use of trademarks and the legitimate use of others, promote the combination of management and promotion by administrative organs, comprehensively implement policies, and help local industry development, the CNIPA revised the “Measures for the Administration and Protection of Collective and Certification Marks” (“Measures”) and released the draft for comments of the Measures on June 7.

The current Measures came into force on June 1, 2003, with a total of 23 provisions. The revised Measures has a total of 35 articles, of which 13 are amended and merged of the earlier provisions, and 21 are newly added. The main modifications are as follows:

• Amend the name of the regulations and improve the legislative purpose: revise the name of the Measures to the Measures for the Administration and Protection of Collective and Certification Marks, so as to highlight the important role played by collective trademarks and certification marks in promoting the development of local special industries and strengthening protection.
• Further standardize the behaviors of application for registration: emphasize that groups and associations established for public welfare or other non-profit purposes can be applicants for collective or certification marks.
• Strengthen the management requirements for registrants and users: registrants should implement daily management in accordance with the use management rules; and users should ensure that the products bearing the collective marks and certification marks meet the quality requirements of the use management rules.
• Add regulations on the registration and fair use of trademarks containing geographical names: clarify that signs should have distinctive features for easy identification; at the same time, considering that geographical names are public resources, it is stipulated that collective marks and certification marks containing geographical names shall not infringe public interests.
• Promote the use of trademarks and improve the level of public services.
• Improve administrative protection and strengthen punishment measures.

2. A mark composed of English letter and numbers is invalidated for lack of distinctiveness

The Beijing High Court recently made a second-instance judgment on the administrative dispute over the invalidation of the “B-6000” trademark with reg. no. 13902341 by dismissing the petition to appeal and upheld the invalidation of the Disputed Mark on goods other than “stationery.”

 Disputed Mark

The Disputed Mark was filed by Antonio (HK) Co., Limited (“Antonio Company”) on January 13, 2014, and was approved for registration on April 21, 2015 for use on “stationery; stationery or household glue; stationery or household tapes; office or household starch pastes (adhesives),” and other goods in Class 16. On December 2, 2019, the CNIPA found that the registration of the Disputed Mark on part of the designated constituted the circumstance referred to in Article 11(i)(1) of the 2013 Trademark Law. The CNIPA therefore maintained “stationery” and invalidated other goods. Antonio Company appealed to the Beijing Intellectual Property (“IP”) Court.

The Beijing IP Court found that the distinctive part the Disputed Mark “B-6000” was similar to standard marking of a product model, and deviated from conventional trademark presentations. From the perspective of the relevant public’s habit of recognizing product models, the Disputed Mark would easily be identified as a product model and not as a trademark. The CNIPA’s decision was affirmed. Unsatisfied, Antonio Company further appealed to the Beijing High Court.

The Beijing High Court found in the final binding judgment that the Disputed Mark consisted of capital English letter, symbol and numbers “B-6000” covered in black solid squares, when used on “sealing compounds for stationery; gluten for stationery or household; adhesive (glue) for stationery or household; office or household starch paste (adhesive); stationery or household self-adhesive tape; stationery or household glue; stationery or household glue; stationery tape.,” the Disputed Mark was likely to mislead relevant consumer to believe that it represented a model of the approved goods, and could not be used to distinguish the source of goods, namely, thus lacking of distinctiveness. The existing evidence provided by Antonio Company was not enough to prove that the Disputed Mark has acquired secondary meaning. The CNIPA decision and first instance judgment have not erred in finding the disputed trademark constituting the circumstance referred to in Article 11(i)(1) of the 2013 Trademark Law, and the appeal should be dismissed.

3. Claire’s successfully invalidated a squatted mark

Disputed Mark

The “GUERISSON 9·complex and Design” mark with reg. no. 14805451 in Class 3 was filed for registration on June 6, 2014 and approved on August 21, 2017 after opposition for use on “polishes; bath cosmetics; skin lightening creams; beauty masks; cosmetics sets; cosmetics; skin cosmetics; sunscreens.” The Disputed Mark’s original registrant TAK KICHUL assigned the Disputed Mark to KIM JAECHUL in November 2017, who further assigned to Beauty China Inc Limited (“Beauty China”) in December 2018.

CLAIRE’S KOREA CO., LTD. (“Claire’s”) filed an invalidation in early 2018 and the CNIPA invalidated the Disputed Mark in accordance with the second paragraph of Article 15 of the 2013 Trademark Law. Beauty China appealed to the Beijing IP Court. The Beijing IP Court affirmed the CNIPA’s decision. Beauty China appealed to the Beijing High Court.

The Beijing High Court found that the evidence in the case can prove that before the application date of the Disputed Mark, Claire’s had applied for the registration of the “GUERISSON 9 complex” logo in Korea and used it on cosmetic products, and cosmetics such as creams marked with the logo had been sold into China through overseas purchasing and other forms of purchase, so the relevant public was aware of Claire’s logo used on cosmetic products. Evidence such as the sales agency contracts signed between Claire’s and certain commercial company and tax bills showed that before the application date of the Disputed Mark, Claire’s had made active and substantive preparations for the launch of its cosmetic products marked with its said logo into the Chinese market.

Second, before the application date of the Disputed Mark, Claire’s signed exclusive sales agreements with a commercial company, stipulating that the latter would sell Claire’s “GUERISSON” brand face cream and other products as an agent in mainland China. In the agreements, “GUERISSON” facial cream products were labeled with the “GUERISSON 9 COMPLEX and Design” mark. The original registrant of the Disputed Mark, TAK KICHUL, engaged in the cosmetics industry and worked for that commercial company, so he should have known about the mark use by Claire’s. The “GUERISSON 9.complex” mark was not an inherent word and has no fixed meaning and has firstly been used by Claire’s on cosmetics and other goods. TAK KICHUL did not provide a reasonable explanation for applying for the registration of the Disputed Mark. Comprehensively considering the specific circumstances of this case, it can be determined that TAK KICHUL should constitute a specific related person who has a contractual, business, or other relationship with Claire’s.

The Disputed Mark “GUERISSON 9·complex and Design” completely includes the “GUERISSON 9 complex” logo previously used by Claire’s, which constituted as a similar trademark. The Disputed Mark’s approved use for bath cosmetics, skin lightening creams, beauty masks, cosmetic sets, cosmetics, skin cosmetic agents, sunscreen agents, cosmetic vanishing creams, cosmetic oils and other goods falls into the same class of goods as Claire’s prior used cosmetic products. The leather protectant (polishing agent) goods approved and used by the Disputed Mark and the cosmetic product prior used by Claire’s have a high degree of overlap in consumer groups and sales targets and should also be identified as similar goods. Without the authorization of Claire’s, TAK KICHUL applied for the registration of the Disputed Mark that was similar to the “GUERISSON 9 complex” logo prior used by Claire’s on identical or similar goods, which has constituted as the circumstances referred to the second paragraph of Article 15 of the 2013 Trademark Law. Hence, the Disputed Mark should be invalidated on all of the designated goods.

Follow us on LinkedIn! Email: trademark@beijingeastip.com Tel: +86 10 8518 9318 | Fax: +86 10 8518 9338 Address: Suite 1601, Tower E2, Oriental Plaza, 1 East Chang An Ave., Dongcheng Dist., Beijing, 100738, P.R. China