Judicial Viewpoint in Detail
【Case Number】: (2018) Jing Xing Zhong 312
【Adjudicating Institution】: Beijing High People’s Court
In this case, all parties agree that the goods associated with the disputed trademark and the goods approved for the cited trademark are the same or similar. The disputed trademark features the Chinese phrase “五粮液年份原浆” (Wuliangye Vintage Original Liquor), which fully incorporates the cited trademark “年份原浆” (Vintage Original Liquor). Both trademarks are used on the same or similar goods, which could confuse the public, leading them to mistakenly believe that the products with these trademarks come from the same source or have a specific connection. The registration application for the disputed trademark contravenes Article 31 of the Trademark Law, and the conclusions of the original judgment and the contested decision are deemed appropriate; thus, this court upholds them.
While the distinctiveness of relevant marks should be taken into account when assessing trademark similarity, elements that lack distinctiveness should not typically be the primary focus in such evaluations. However, if a trademark consists entirely of non-distinctive elements, placing too much emphasis on its distinctiveness and allowing subsequent applicants to add new elements to an already registered trademark undermines the validity of the previously registered trademark in similarity assessments. This approach not only infringes on the exclusive rights of the prior trademark owner but also disrupts the order of trademark registration, creating confusion between different legal provisions. Particularly since Article 44, Paragraph 1 of the Trademark Law clearly outlines the invalidation procedures for trademarks lacking distinctiveness as per Article 11, it is inappropriate to disregard these established legal procedures and undermine the validity of the cited trademark during trademark similarity evaluations.
In this situation, even though Wuliangye Company argues that the phrase “vintage original liquor” in Class 33 for “alcoholic beverages” may be perceived by the public as merely descriptive of the product’s physical condition, aging, quality, and production method—thus lacking the distinctiveness necessary for trademark registration—there could be disagreements about whether its registration aligns with Article 11 of the Trademark Law. Additionally, during the proceedings, the validity of the cited trademark as a registered trademark should not be dismissed solely based on distinctiveness concerns. Allowing the registration of the disputed trademark might lead to two similar trademarks coexisting on the same or similar products.
Moreover, the law considers fairness. Any business seeking trademark registration not only desires approval or maintenance of the disputed trademark but also expects their previously registered trademarks to receive comprehensive legal protection.
In this situation, while Wuliangye Company may claim that its “Wuliangye” trademark is widely recognized and that the referenced trademark lacks distinctiveness or should not receive protection, it is important for the company to follow the appropriate legal procedures to address any issues related to prior rights that may impact trademark registration. Rather than attempting to associate its trademark with another validly registered trademark in order to obtain a new registration, Wuliangye should pursue the correct legal avenues.
Disregarding established legal protocols can complicate the resolution of related disputes and create a negative precedent, potentially allowing holders of well-known prior trademarks to infringe upon, exclude, or even undermine the legitimate trademark rights of others. This could ultimately jeopardize the rights and interests of all trademark owners, including Wuliangye Company, which already possesses exclusive rights to its registered trademark.
Judicial Viewpoint in Detail
【Case Number】: (2019) Jing Xing Zhong 5580
【Adjudicating Institution】: Beijing High People’s Court
In response to the appeal from CNIPA and Haitian Company regarding the use of the term “original brewing” for soy sauce and similar products, which they claim is weak or lacks distinctiveness, the court states that according to Article 11 of the Trademark Law: “The following signs cannot be registered as trademarks: (1) those that are simply the generic name, image, or model of the goods; (2) those that solely indicate the quality, main ingredients, function, use, weight, quantity, and other characteristics of the goods; (3) other signs that do not possess distinctive features. However, signs mentioned in the previous paragraph that have gained distinctiveness through use and are easily recognizable may be eligible for trademark registration.”
Additionally, the first paragraph of Article 44 specifies: “Registered trademarks that contravene the provisions of Articles 10, 11, or 12 of this law, or that have been acquired through deceptive or improper means, shall be deemed invalid by the Trademark Office; other parties may request the Trademark Review and Adjudication Board to invalidate the registered trademark.”
While assessing trademark similarity, the distinctiveness of relevant marks is important, but elements of a trademark that are not distinctive should not be the primary focus in this evaluation. If a trademark consists entirely of non-distinctive elements, placing too much emphasis on its distinctiveness and allowing new applicants to add elements to an already registered trademark undermines the validity of that original trademark during the similarity assessment. This approach not only jeopardizes the exclusive rights of the original trademark owner but also disrupts the trademark registration process, creating confusion among different legal provisions.
Particularly in reference to Article 44, Paragraph 1 of the Trademark Law, which states that trademarks lacking distinctiveness can be declared invalid, it is crucial to adhere to the established legal procedures and not undermine the validity of cited trademarks during the similarity evaluation.
Thus, if CNIPA and Haitian Company question the distinctiveness of the disputed trademark and its compliance with Article 11 of the Trademark Law, they should address the issue through the appropriate legal channels. If the cited trademarks still qualify as prior trademarks under Articles 30 and 31 of the Trademark Law, they should prevent the registration of the new trademark application.
As a result, it is important to recognize the legal validity of the referenced trademarks, which are acknowledged as validly registered prior trademarks. This leads us to conclude that the registration of the contested trademark violates Articles 30 and 31 of the Trademark Law, rendering it invalid. Consequently, this court does not uphold the assertions made by the National Intellectual Property Administration and Haitian Company.
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