Chinese IP Law Updates
April 10, 2020

The Positive Impact of Trademark Popularity

The Positive Impact of Trademark Popularity in Trademark Authorization and Confirmation Cases

Author: Edmond Ou, Joffy Li

As the saying goes, “what is fought in court, becomes evidence”. This also applies to trademark authorization and confirmation cases, especially in those where providing usage evidence to prove the popularity of a trademark is common practice.

Recently, the application for the registration of the mark “六个西瓜” (LIU GE XI GUA, in Chinese) designated on cosmetics, was rejected by CNIPA in accordance of the provision on Article 10.1.7 of TrademarkLaw “a sign which is deceptive and can easily mislead the public regarding the quality or origin of goods”. Dissatisfied with the rejection, the trademark applicant filed a refusal review but failed.

However, another similar trademark “六个核桃” (LIU GE HE TAO, in Chinese) was registered successfully on goods related to non-alcoholic beverages, etc., while the mark “LIU GE XI GUA” failed.

The registration of the trademark “LIU GE HE TAO” was not an easy process, to begin with. Since it applied for registration in 2006, it has gone through a refusal review, an opposition, an opposition review, a first Instance and the second Instance of Administrative Litigation. After its registration in 2012, it was applied for invalidation by two other applicants. Fortunately, the registration of the trademark “LIU GE HE TAO” was maintained. Also, considering a similar registration experience the trademark “LIU GE HE TAO” had, the trademark “年份原浆” (NIAN FEN YUAN JIANG in Chinese) designated on spirits (beverages), maintained its active status.

Despite the similar grounds of the refusal between the trademarks “NIAN FEN YUAN JIANG” and “LIU GE HE TAO” which was found in the trademarks lacking distinctiveness, both were approved for registration after some time, as they started to obtain distinctiveness, as well as popularity through use. In this regard, this registration is in the hope to support the correspondence between the trademark usage and the applicants. The grounds in which the trademark “LIU GE XI GUA” was refused, are not only constituting the scenario stipulated in the Article 10.1.7 of the Trademarks Law but also with its lacking distinctiveness as well. What’s more, insufficient usage evidence was provided to establish its popularity or easier identification during the review process.

In cases of refusal review, the trademark could be approved for registration by providing usage evidence to show its popularity or constituting the scenario as stipulated in Article 10.1.2 of the Trademark Law, if the trademark office rejected the trademark based on Article 11.1 rather than Articles 10.1 or 44.1 of Trademark Law. [see below for provisions]

So, how to reach that “well-known” status to meet the “certain popularity” standard, to have the consumers easily distinguish the source of goods/services? Two points shall be given consideration, the type of usage evidence and the frequency, breadth, and depth of use of the trademark. Trademarks are usually used in two aspects, sales or advertising, considering advertising evidence is indispensable and required to prove such popularity. It would be difficult for a trademark lacking distinctiveness to obtain “certain popularity” with consumers within three years so that it can pass the registration process if no such advertising evidence provided. Furthermore, the provided advertising evidence shall be used frequently, extensively and deeply by a wide range of platforms and in a variety of regions with high exposure and social influence. In general, the standards upon which the usage or promotion of the applying trademark are held shall be in line with the standards regarding the popularity proof of the trademark as stipulated in Article 32 of Trademark Law.

In administrative cases such as trademark opposition and invalidation, the popularity of the cited trademark is particularly important when the trademark applicant claims rights in similar goods/services, especially when entering the stage of administrative litigation. In light of the registration procedures and examination standards of the trademark office, the popularity of prior registered trademark shall not be considered in the preliminary examination, while such popularity of the cited trademark is highly considered in opposition or invalidation cases.

Thus, trademark popularity is of great importance in the aforementioned review cases. We believe that the principle of confusing is used to judge two trademarks to whether they constitute similar trademarks in similar designated goods/services. If the applying trademark and the cited trademark are with identical composing elements but indifferent sub-classes, the confusion would have arisen among the public when the cited trademark obtained certain popularity before the application date of the opposed trademark or the disputed trademark.

As such, the aforementioned two trademarks would be deemed as similar trademarks in similar goods/services to safeguard the interests of the prior trademark owners and relevant consumers. In practice, we reckon that the higher importance the examiners attach to trademark popularity, the wider judging standards they will have to similar trademarks or similar goods/services.

Relevant provisions:
<Trademark Law>

Article 10, The following signs may not be used as trademarks:

…(7) A sign which is deceptive and easily misleads the public regarding the quality or source of goods…

Article 11, The following signs may not be registered as trademarks:

A sign only bearing the generic name, design, or model of the goods.

A sign only directly indicating the quality, main raw materials, functions, uses, weight, quantity, or other features of goods.

Other signs lacking distinctiveness.

If a sign listed in the preceding paragraph has obtained distinctiveness through use and can be easily identified, it may be registered as a trademark.

Article 32, No application for trademark registration may infringe upon the existing prior rights of others, and bad-faith registration by illicit means of a trademark with certain popularity already used by another party shall be prohibited.

Article 44, Where a registered trademark violates Article 4, Article 10, Article 11, Article 12, or paragraph 4 of article 19 of this Law, or its registration was acquired by fraud or any other illicit means, the Trademark Office shall declare invalidation of the registered trademark, and any other organization or individual may petition the trademark Appeal Board to declare invalidation of the registered trademark.