In April, 2016, Beijing Intellectual Property Court made the first instance judgment, canceled the Rejection Appeal Decision regarding the mark “AIR RESCUE & Design” made by the Trademark Review & Adjudication Board (TRAB), and determined that the TRAB shall make a new decision on the application for review regarding the mark “AIR RESCUE & Design”.  See 【Beijing Intellectual Property Court (2016) Jing Zhi Xing Chu No. 579 Administrative Judgment and Beijing Intellectual Property Court (2016) Jing Zhi Xing Chu No. 580 Administrative Judgment】

Jason Wang, partner at Beijing East IP Law Firm, and his team represented the applicant BLUE CROSS TRAVEL SERVICES B.V in this case.

The applicant is a wholly-owned subsidiary of a Singapore legal person AEA INTERNATIONAL HOLDING PTE. LTD. (AEA), represents AEA hold its ownership of registered trademarks, including the mark “International SOS & Design” and the mark “Air Rescue & Design”, etc., acquired from all over the world, and manage these trademarks.  AEA was established in 1985.  In July, 1998, AEA entirely merged INTERNATIONAL SOS ASSISTANCE and created the first international medical risk management Inc, INTERNATIONAL SOS PTE. LTD.  The new corporation continued its predecessor’s service, and today, it has become the world’s largest medical assistance company.  Also, it is the main provider of global on-site medical services in remote areas.  INTERNATIONAL SOS PTE. LTD. has 28 alarm centers, 31 international clinics, 69 INTERNATIONAL SOS PTE. LTD. offices and more than 170 security and medical facilities in remote areas in over 70 countries, provide services for customers and members in different industries.

The application mark “AIR RESCUE & Design” is designated in Class 39, including “transportation services, namely organizing and planning of emergency evacuation and repatriation services for people, patients, the injured and the sick; ambulance services; air ambulance services; arranging the transportation and delivery of medical equipment, medical supplies and medications by air, sea and land; arranging the escorting of travelers; arranging the hire of all means of transport; advisory services relating to travel; arranging the emergency replacement of airline tickets; arranging the transportation of patients by ambulance; arranging of transportation for the injured, sick, as well as medical and nursing staff; information and advisory services relating to the aforesaid services, provided on-line from a computer database” and in Class 44, including “medical and emergency site consultation services, namely, the review and assessment of information regarding the availability of medical care and accessibility of emergency transportation; diagnostic testing relating to the human body; medical assistance and medical services; monitoring of medical services; monitoring of patients; conducting of medical examinations; medical and emergency site consultation services for the location of medical facilities for emergency; medical and emergency site consultation services for the location of emergency healthcare medical treatment; replacement of medical prescriptions, preparation of reports relating to health care matters; arranging for medical treatment Medical and emergency site consultation services, namely, the review and assessment of information regarding the availability of medical care and accessibility of emergency transportation; diagnostic testing relating to the human body; medical assistance and medical services; monitoring of medical services; monitoring of patients; conducting of medical examinations; medical and emergency site consultation services for the location of medical facilities for emergency; medical and emergency site consultation services for the location of emergency healthcare medical treatment; replacement of medical prescriptions, preparation of reports relating to health care matters; arranging for medical treatment”

The court of first instance holds as follows:

According to defense opinions of both parties, the focus of controversy in this case is whether the application mark constitutes situation under provision of Article 11.1(2) of the Trademark Law that “Marks that merely indicate the quality, principal raw materials, function, use, weight, quantity or other features of the goods in respect of which the marks are used.”

Trademarks as a kind of marks, in accordance with provision of Article 9 of the Trademark Law, shall be so distinctive as to be distinguishable.  Because marks that “merely indicate the quality, principal raw materials, function, use, weight, quantity or other features” are easily recognized as descriptions of goods characteristics rather than as distinguishable trademarks, these marks will not have distinctive characteristics and shall not be registered as trademarks.  Besides, descriptive marks in trademarks will not affect the entire trademarks having distinctive characteristics.  Rule 5 of China Supreme Court on Several Issues concerning the Trial of Administrative Cases Involving the Granting and Determination of Trademark Right provided as follows: “Where on the trial of administrative cases involving the granting and determination of trademark right, People’s Court shall judge and determine whether trademarks have distinctive characteristics entirely according to the general awareness of relevant public of disputed trademarks’ designated goods. Marks contain descriptive elements which do not affect the entire trademarks having distinctive characteristics or performance in a unique way, if the relevant public can identify the source of goods, they shall be determined as having distinctive characteristics.”  In this case, the application trademark consists of the word “Air”, the word “Rescue”, an airplane and lines. Although the word “Air” and “Rescue” are general translated as “KONGZHONGYINGJIU in Chinese”, which is distinctive on designated goods of “air rescue service; etc.” in Class 44 and “medical assistance, medical service, patient monitoring and medical examination” in Class 44, the drawing of airplane and lines have a certain sense of design and the word are surrounded by the drawing in composition which make the trademark is so distinctive as to be distinguishable.  As a result, the mark “Air Rescue & Design” does not belong to “marks that merely indicate the quality, principal raw materials, function, use, weight, quantity or other features”.

At the same time, the use of trademarks takes goods as the carrier.  Therefore, in determining whether a mark has distinctive characteristics, the degree of association between the mark and its designated goods should be investigated. The higher the degree of association is, the lower the distinctiveness is; the lower the degree of association, the higher the distinctiveness.  Situation under provision of Article 11.1(2) of the Trademark Law, relationships of direct characteristics between marks and goods shall be “directly expressed” but not “indirectly expressed”, which is a state that does not pass through the middle.  The application trademark’s designated service is not limited to “air rescue service” and, in other service projects, do not consist direct description of services and contents.