Article 8 of the Trademark Law Any sign capable of distinguishing - - PDF document

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Reception and examination of non-conventional trademark applications

Trademark Review and Adjudication Board of the State Administration for Industry and Commerce Wang Jihong, Nov. 2016

• Any sign capable of distinguishing the

goods of a natural person, a legal person, or any other organization from those

• f
• thers,

including but not limited to word, pattern, letter, numeral, three- dimensional symbol, combination of colors, and sound, as well as a combination of the above, may serve as a trademark for registration application.

The third amendment of the trademark law in 2013 included sound marks in the scope of trademark registration and protection.

Article 8 of the Trademark Law

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Non-conventional trademark-3D trademark

• A 3D trademark is one that consists of a three dimensional

mark or in combination with other elements. A 3D trademark may be the shape of a product itself, product packaging or

• ther three-dimensional signs.

formal examination of 3D trademarks

• In the case that the applicant intends to file for a 3D trademark, such an

intention shall be declared in the application. Where no such declaration is made, a 2D trademark is filed for as default.

• The applicant shall submit trademark pattern that are sufficient to

determine the three-dimensional shape of the mark, and that include at least three view projections of the mark.

• The applicant shall specify the use mode of the 3D trademark in

commercial activities in detail.

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The use mode of the trademark

Applicant: Taipei Financial Center Corporation Goods: jewellery Use mode: the 3D pattern of the landmark

• TAIPEI101. The trademark will be used as goods

package Applicant：Changrongsheng Medical Technology Co., Ltd. Goods： Vitamin preparations，human medicine Use mode: the 3D trademark is used as the shape

• f the goods, the shape of the package case, the

3D distinctive mark or 3D advertisement object in

• ffices and in show windows.

legality examination of 3D trademarks（Article 10 of the Trademark Law）

Case study: Review of rejection of the registration application for No. 1221416 device trademark

 Applicant: PHILIPP PLEIN The Trademark Review And Adjudication Board ruled that: the candidate trademark is a skull with no other constitutive elements, which is prone to startle the relevant public and cause negative effects. It falls into the circumstance referred in article 10.1.8 of the Trademark Law of the People’s Republic of China.

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Beijing Intellectual Property Court, Judgment (2016) Jingzhixingchu No. 2843 In the present case, the disputed trademark consists of a skull covered with small diamonds. Given the density of the diamonds, the mark is in general viewed as a vivid skull which would cause fear, startle the general public and bring about negative influences. The registration of other trademarks raised by the plaintiff is not relevant to the present case, nor could they prove that the dispute trademark should be registered. The evidence submitted by the plaintiff did not prove the registrability of the disputed trademark. In light of the above, the defendant’s decision that the disputed trademark falls into the circumstance referred in article 10.1.8 of the trademark law is correct and shall be upheld by this Court.

examination of the distinctiveness of a 3D trademark (Article 11 of the Trademark Law)

Case study: Review of rejection of the international registration No. 1221520 3D device trademark Applicant: Gaishibao Spain Company

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This Board holds that the candidate trademark is a three dimensional shape of a sprayer that is to be used as a container of manual sprayer for agricultural, horticultural, industrial and household purpose (excluding sprayer for medical purpose). As the candidate trademark is not easily be recognized as a trademark by consumers due to its lack of the due distinctiveness of a trademark, it has fallen into article 11.1.3 of the Trademark Law. The evidence on record submitted by the plaintiff is not sufficient to prove the registrability of the candidate trademark on the designated class 8 goods. In accordance with article 11.1.3, Article 30 and Article 34 of the Trademark Law, the Board decided that: The application of extended protection on China’s territory for the candidate trademark on the designated class 8 goods is denied.

The Trademark Review And Adjudication Board ruled that

examination of the non-functionality of a 3D trademark (Article 12 of the Trademark Law)

The designated goods: lighters

Applicant (the opponents in the first instance): Wenzhou Star Smoking Sets and Optical Ltd. Co. Wenzhou Smoking Sets Association Respondent (respondent in the first instance): Zhibao Manufacturing Co.

Case study: Review of opposition of the registration application of No. 3031816 device (three dimensional) trademark

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In the present case, the opposed trademark is a three dimensional one that represents that shape of a lighter with the overall visual effect of a cuboid. The upper and lower parts are connected by a hinge, with the lower part longer than the lower one. The front, back and the bottom are flat with rounded corners and a slight arch at the

• top. Specifically, the cuboid shape is convenient for holding and carrying, the use of the upper lid is for security

purposes and the higher lower lid facilitates refilling fuel and configuring inner parts. Such a design, which brings a more reasonable shape and more convenient functions for a lighter, is resulted from the nature of the

• good. The hinge between the upper and lower lids are for connection purposes, and hence, shapes necessary for

achieving a technical effect. Secondly, the opposed trademark in the shape of a lighter is simple. The rounded corners and the slightly arched top more comfortable than rectangular corners, which could avoid scrap as well as provide aesthetic function. Such a design could have a substantial influence on the consumption behaviour of the relevant public, and is a shape to add a substantive value to the goods. In light of the above, the opposed trademark falls into the circumstance referred in Article 12 of the Trademark Law.

The Trademark Review And Adjudication Board ruled that

Beijing High People’s Court Judgment (2015) Gaoxing(zhi)zhongzi No. 4355

Therefore, it is correct for the Trademark Review and Adjudication Board and the first instance court to hold that the shape of the opposed trademark is functional and should render the trademark unregistable. Zhibao’s grounds for appeal that the opposed trademark is not functional is not with factual basis and shall not be upheld by this court. In the event that the trademark shall not be registered due to its functionality, the acquisition of distinctiveness through use is relevant to the registrability of the trademark. hence, this Court would not review grounds on the acquired distinctiveness and the relevant evidence. In light of the above, and in accordance to Article 89.1.1 of the Administrative Procedural Law of the People's Republic of China, it is hereby decide that: The appeal is denied and the original judgment is upheld.

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similar similar

examination of the priority of a 3D trademark (Article 13

• f the Trademark Law)

similar

• A sound trademark is one consists of sounds that are able to

distinguish the source of goods or services. A sound trademark may consist of musical sounds such as a piece of melody, non- musical sounds, such as the sound of nature, a human being or an animal, or a combination of musical and non-musical sounds.

Non-conventional trademark-sound trademark

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The first sound trademark registered in China The opening tune of a show by China Radio International

this sound trademark is the opening tune of a show by China Radio International. 40 seconds long, it is divided into 18 bars, with two-fourths slow pace and alternation of G major and C major. The first 4 bars are the intro of the sound trademark, which is G

• major. The middle 11 bars are the body in C major, among which the announcer

announces the China Radio International at the 12th and the 13th bar. The body concludes with 2 bars after. The last 3 bars are the refrain played with the celesta, with which the sound trademark ends in G major.

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formal requirements for registration of a sound trademark

 (1) Where an application is filed for registering a sound trademark, it shall be

stated in the application,

 (2) the applicant shall submit a sound sample that meets the prescribed

requirements

 (3) a description of the sound mark to be registered shall be provided,  (4) the applicant shall indicate under the circumstances for the use of the sound

trademark (use of the trademark)

sound sample

• Where the sample is submitted with tangible material, the applicant

shall submit a read-only disc with only the audio file. Where the sample is submitted electronically, the applicant shall correctly submit the audio-file

• the audio file shall be in wav or mp3 format with a size of less than 5 MB
• the sound sample shall be consistent with the trademark description

(explanation or description of the scores or texts)

• the sound shall be clearly discernible in the sample

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description of a musical sound trademark

• In addition to a textual description of the sound mark, the stave or numbered musical

notation shall be used to describe the sound to be registered as a trademark. The stave

• r numbered musical notation and the textual description shall be the design of the
• trademark. the stave or numbered musical notation shall be clear, accurate and

complete, which may consist of clef, key signature, take number (beats), bars, musical notes, rests, temporary signs (ascending, and descending, and restore)

a musical sound trademark this sound trademark consists

• f the string of letter names

ABCDE

description of a non-musical sound trademark

• if it is impossible to describe the sound mark with the stave or numbered

musical notation, a textual description shall be provided. the textual description shall be the design of the trademark. The textual description shall be clear, accurate, complete, objective and easy to understand

a non-musical sound trademark trademark description: this is a sound trademark as represented in the annexed disc. It consists

• f

the footsteps of a cow walking on a paved road and the sound it then made (clip, clop, moo)

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Description of a sound trademark with both musical and non-musical sounds

• for a sound trademark with both musical and non-musical sounds, the musical

part shall be described with stave or numbered musical notation accompanied with textual

• description. the textual party shall be described with texts. the

stave or numbered musical notation and the textual description shall be the design of the trademark.

this is a sound trademark as represented in the annexed disc. It consists of a soprano’s singing

• f Hi life hi life 莱尔富 by following the notes

as represented in the application.

a sound trademark with both musical and non-musical sounds

description of use

• the applicant shall indicate under the circumstances for the use of

the sound trademark. for example: when the good in question is turned on, shut off or in use, at the business operation or service premises, on the companies website, or in advertisement in radio, TV, network or outdoor advertisement.

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Substantive examination of sound trademarks substantive examination of sound trademarks examination of absolute grounds legality examination distinctiveness examination examination of relative grounds priority examination

1/24/2014

23

合法性审查

legality examination of a sound trademark

a sound trademark may not contravene to Article 10 of the Trademark Law： for example sounds that are identical or similar to the tune of anthem of China or a foreign country, military songs or the Internationale religious music or terrifying, violent or sounds with negative influences

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distinctiveness examination of a sound trademark

• sounds that directly indicates the goods or service, the consumers or
• ther features are non-distinctive

the sound of a piano on a musical instrument the sound of kids playing on baby formula the sound of a dog or a cat on pet foods the sound of opening a bottle on wine the sound of classical music on concert organization the sound of a kid announcing “the water is boiling” on a electric kettle

显著性审查

Other sounds that lacks distinctiveness simple or ordinary tune or melody； a complete or long song or musical work an ordinary slogan spoke in plain tune music or sound commonly used in the industry

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? acquired distinctiveness through use

• under general circumstances, a sound trademark only acquires

distinctiveness through long-term use

• the Trademark Office may issue a notice to the applicant for

sound marks that lacks inherent distinctiveness to provide evidence on use and on the acquired distinctiveness through use case study: Review of rejection of the registration application of No. 15430437 trumpet intro sound trademark Applicant: China National Radio

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This Board holds that the evidence submitted by the applicant showed that the trumpet intro sound trademark is designated to “radio broadcasting, wireless broadcasting, cable television broadcasting, television broadcasting, news agencies , wire service” services. A specific connection between the trademark and the applicant has been established through the use of the trademark, which obtains the distinctiveness to indicate the source of the service and may be registered as a sound trademark. The candidate trademark is not sufficient to indicate the source of service, nor is it distinctive on the designate information transmission and other services, which falls into the scope of Article 11.1.3 of the Trademark

• Law. Evidence submitted by the applicant has failed to prove that a specific connection between the

sound trademark and the designated information transmission and other services has been established through long term use that the mark is sufficient to indicate the source of service. In accordance with Article 11.1.3, Article 30 and Article 34 of the trademark law, and article 21 of the Implementation Regulations of the Trademark Law, it is hereby decided that: The application of trademark on radio broadcasting, wireless broadcasting, cable television broadcasting, television broadcasting, news agencies , wire service” services is preliminarily approved while registration on the rest of the services is denied.

The Trademark Review And Adjudication Board ruled that

• 1. examination of likelihood of confusion between sound trademarks

Where two sound trademarks are identical or similar in terms of the overall perception or effect, so that the relevant public may confuse the source of the goods or services, or resume a specific connection between the two, the two trademarks are identical or similar trademarks

• 2. examination of likelihood of confusion between a sound trademark and a visual trademark

where the text or other elements in the sound trademark are identical or similar to the text or

• ther elements in a visual trademarkso that the relevant public may confuse the source of the

goods or services, or resume a specific connection between the two, the two trademarks are identical or similar trademarks

 examination of likelihood of confusion of a sound trademark

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similar

thank you for your attention and I look forward to your opinions

Wang Jihong wangjihong@saic.gov.cn