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The examination and judgment of “other meanings” and the registrability of trademarks with geographical names

- Comment on the administrative disputes of Las Vegas Sands Corp. v. Trademark Review and Adjudication Board of SAIC on the refusal and review of trademark application

Gist

The “other meanings” in Article 10 Item 2 of China Trademark Law include another fixed meaning other than place names and the meaning obtained through use of the trademark to identify the source of goods or services. The determination of the above two types of “other meanings” should follow the principle of holistic identification and judge as a whole, so as to determine whether the disputed place name trademark has distinctive features for the relevant public to identify it as a sign for distinguishing goods or services sources.

Case

Plaintiff: Las Vegas Sands Corp. (hereinafter referred to as Sands Corp.)

Defendant: Trademark Review and Adjudication Board of SAIC (hereinafter referred to as Trademark Review and Adjudication Board)

Cause: Administrative disputes of refusal and review for trademark application

No. 11227520 “Macau Parisian” trademark (referred to as the applied trademark) was filed by Sands Corp. on July 19, 2012 with the Trademark Office of SAIC (referred to as the Trademark Office), and designated for use in Class 43 including “hotel” and other services. On July 16, 2013, the Trademark Office made a refusal notice and rejected the application for registration of Sands Corp. , and the company applied to the Trademark Review and Adjudication Board for review.

On April 15, 2014, the Trademark Review and Adjudication Board made its No. 63340 [2014] Decision on the Refusal and Review of No. 11627520 “Macao Parisian” Trademark (referred to as the Decision on appeal). According to the Trademark Review and Adjudication Board, “Macau” is a special administrative region of China, which belongs to an administrative division above the county level; the “Parisian” directly expresses the service targets and characteristics of the designated service items and is not easy to be recognized as a trademark with its lacking distinctiveness. Therefore, “Macau Parisian” should not be used or registered as a trademark. The Trademark Review and Adjudication Board, according to Article 10 Item 2, Article 11 Item (1-2), and Article 28 of Trademark Law of People's Republic of China (referred to as China Trademark Law) amended on October 27, 2001, decided that the application should be rejected.

Sands Corp. refused to accept the decision and filed an administrative lawsuit with Beijing First Intermediate People's Court.

In the first-instance litigation, Sands Corp. submitted partial registrations of the applied trademark in other countries and regions, a search report of the National Library with “Macau Parisian” as the key words and online media coverage of “Macau Parisian”. In the second-instance litigation, it submitted relevant evidence that other trademarks were allowed to register.

Judgment

The Beijing First Intermediate People’s Court held that: “Macao” in the applied trademark is a special administrative region of China, which belongs to an administrative division above the county level and may not be registered as a trademark; “Parisian” directly indicates the service targets and characteristics of designated service items, and is not easy to be identified as a trademark with lacking distinctiveness. With its clear facts, legal examination procedure, correct application of law, the Decision on appeal should be maintained.

To sum up, the Beijing First Intermediate People’s Court, in accordance with Article 54 Item 1 of Administrative Procedure Law of the People’s Republic of China before the amendment, decided to maintain the Decision on appeal made by the Trademark Review and Adjudication Board.

Sands Corp. refused to accept the result and appealed. The reasons for the appeal are as follows: the applied trademark does not lead to misunderstanding of the relevant public to the source of the service and does not violate the provisions in Article 10, Item 2 of China Trademark Law; the applied trademark as a whole has strong originality and distinctiveness, and does not belong to the prohibition of registration stipulated in Article 11 Item (1-2) of China Trademark Law of 2001; the applied trademark is widely publicized and used with a high reputation and is totally enough to identify the source of service.

The Beijing Higher People’s Court held that “Macau” in the applied trademark is the name of the Chinese Special Administrative Region and belongs to the administrative division above the county level, “Paris” is the capital of France known to the Chinese public, and although the Chinese character “人 (person in English)” is added, but as a whole, it has not yet formed any other meaning which is obviously different from the place name. The evidence submitted by Sands Corp. at the stage of review and original trial litigation is not sufficient to prove that the applied trademark has other meanings on the whole. At the same time, trademark rights are territorial, and the registration of trademarks in other countries and regions cannot be used as the basis for registration in China’s mainland. In addition, trademark review cases follow the principle of case review, and the approval of registration of other trademarks submitted by Sands Corp. cannot be used as a reason for registration of the applied trademark. In summary, the application for registration of the trademark is not in conformity with Article 10 Item 2 of China Trademark Law and shall not be approved. The judgment of the original instance and the Decision on appeal that the application for registration of the trademark violated the provisions in Article 10 Item 2 of China Trademark Law, are correct. However, it needs to be corrected that it was improper to review and judge the applied trademark from two parts “Macao” and “Parisian” and not on the whole as the original judgment and the Decision on appeal did.

The Beijing Higher People’s Court, in accordance with the provisions in Article 61 Item 1 of Administrative Procedure Law of the People’s Republic of China before the amendment, rendered the judgement by dismissing the appeal and upholding the original judgment.


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