Weekly China Trademark News Updates

September 7, 2022

1. Trademark rejection appeal cases will move fully online

On September 5, 2022, the CNIPA issued a notice that in order to further improve the digitization and greenify of trademark reviews, the CNIPA will fully move all rejection appeal cases online. Starting from November 1, 2022, trademark agencies should, in principle, submit electronic applications through the online trademark service system for rejection appeal and should not submit anything in paper.

2. MISS TOUR WORLD vs. MISS WORLD

Miss World LTD (“Miss World”) manages the international competition of Miss World Tourism based on its trademarks such as “Miss World in Chinese” (Reg. Nos. 3796247, 12346489), “MISS WORLD” (IRN. 816100, Reg. No. 12346493)” and filed an invalidation against the “Miss World Travel in Chinese and Figure” mark (“Disputed Mark”).

Disputed Mark	Cited Marks

The Beijing Intellectual Property Court and the Beijing Higher People’s Court found that the services other than animal taming approved for the Disputed Mark were the same as the approved services of Cited Marks 1 to 4 in organizing education or entertainment competitions, book publishing, and providing models for artists, or other similar services. The evidence provided by Miss World for the “Miss World in Chinese” and “MISS WORLD” marks proved that it has organized and held the first Miss World beauty contest since 1951 and has been held in many countries prior to the Disputed Mark’s application date. A total of 64 events have been held, and many events have been held in China, and some Chinese attendees have won the championship. Since 2001, a number of Chinese media have promoted and reported on the Miss World contest and used the “Miss World in Chinese” and “MISS WORLD” marks, which has resulted in a corresponding relationship between “Miss World in Chinese” and “MISS WORLD.” “Miss World in Chinese” and “MISS WORLD” were also known to the relevant public in China. The Disputed Mark consists of “Miss Tour World in Chinese and MISS TOUR WORLD” and design, of which the text “Miss Tour World in Chinese and MISS TOUR WORLD” was its main identification part. The Cited Marks “Miss World in Chinese” and “MISS WORLD” were completely included in the Disputed Mark and they were also similar in pronunciation, words composition and other aspects, which constituted similar marks. If the Disputed Mark coexists with the Cited Marks on the approved services other than the “animal taming” service, it would be easy for the relevant public to confuse and misidentify the source of the service. Most of the evidence submitted by Miss Tour World Company were formed from 2009 and later, which was not sufficient to prove that the Disputed Mark has enjoyed certain fame before the date of application of the Cited Marks, so that it can be distinguished from Cited Marks. At the same time, the evidence submitted by Miss World can prove that before the Disputed Mark’s application date, the trade names “MISS WORLD” and “Miss World in Chinese” used on the “Organizing Beauty Pageant” service have already enjoyed certain fame, and the main identification part of the Disputed Mark completely includes Miss World’s prior used trade name. The services approved and used by the Disputed Mark were closely related to the “organizing beauty pageant” service provided by Miss World in terms of service content and objects, and should be identified as the same or similar services. Therefore, the registration of the Disputed Mark constituted the situation under Article 32 of the 2013 Trademark Law where “a trademark application shall not damage the existing prior rights of others.”

3. A “Playlist in Chinese” trademark was ruled as a deceitful trademark

The “Playlist in Chinese” mark with reg. no. 11934833 (“Disputed Mark”) owned by Hangzhou NetEase Cloud Music Technology Co., Ltd. (“NetEase”) was approved for registration on August 14, 2015, and was approved for use in “electronic publications (downloadable); computer programs (downloadable software); computer software (already downloaded)” recording); computer game software; mobile phones; network communication equipment; cartoons; recorded computer programs (programs); cameras (photography)” and other goods. Huijia Asia Co., Ltd. (“Huijia”) filed an invalidation against the Disputed Mark. The Beijing High Court found that the Disputed Mark can be understood as a collection of songs summarizing the names of song works, performers and other information according to different needs and preferences. Data processing activities such as information data collection, selection, sorting, etc., whose application involve entertainment, education, and other activities. Using such a mark on the said data processing activities or entertainment, education-related products would be easy to confuse relevant consumers that such a mark was describing the said data processing activities, which made it difficult to identify such a mark to distinguish the source of the goods. The courts held that the Disputed Mark lacked the distinctive characteristics that a trademark should have, which constitutes the situation in the second item of Article 11, Paragraph 1 of the 2013 Trademark Law. When the above-mentioned products were not related to music or song-related information data processing activities, music or song-related entertainment and educational activities, the “Playlist in Chinese” mark was likely to cause the relevant public to misunderstand the characteristics of the said goods and constituted the circumstances in the provisions of Article 10, Paragraph 1, Item 7 of the 2013 Trademark Law. The understanding of the meaning of a symbol should be based on the general cognitive habits and abilities of the relevant public. NetEase’s claim that the “Playlist in Chinese” mark had a special meaning is unfounded, and the evidence provided by NetEase was insufficient to prove that the Disputed Mark has been used to obtain recognition as a trademark. The distinctive features of the Disputed Mark were not enough to prove that it has established a unique correspondence with it, and the court did not support the relevant claims of NetEase. Accordingly, the Beijing High Court reversed the first-instance judgment made by the Beijing Intellectual Property Court and held that the trademark should be invalidated.

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