Is there any interest in protecting Chinese character marks in the European Union?

According to the EUIPO’s 2018 Annual Report, China is ranked third among the top 10 filing countries (which represent 71.71% of total filings in the European Union). The European Union remains one of the biggest territories of interest for Chinese applicants after the United States and South-East Asia.

We recently noticed a growing demand from Chinese companies for registering Chinese character marks in the European Union. This “behaviour” is surprising, as Chinese companies used to adapt their brand’s name to the countries in which they would be implemented, as European companies do (for example, the French brand Evian became “依云 [Yī yún] in China, and the Chinese company 小米 [xiǎomǐ] became “Xiaomiin Western countries).

The problem with these filings is that European consumers are presumed not to read or understand the Chinese character marks during their purchasing experience and using services. Although the Chinese language is the most spoken in the world, the EUIPO does not consider Chinese speaking people as “a substantial part of consumers in the European Union[1].

This approach leads to the following consequences:

1. Chinese character marks are figurative marks by nature.

According to the EUIPO’s guidelines, the trademarks which are composed of “letters from non-EU alphabets” are figurative marks. Indeed, the EUIPO has consistently held that Chinese characters represent “purely figurative element or ornamental elements[2], “illegible element[3] or “mere calligraphic and abstract signs[4] in the eyes of the European Union’s consumers.

2. At the time of filing, the EUIPO does not request the applicant to provide any description, translation nor transliteration of the Chinese character mark to be filed.

This means that a Chinese character mark, which would have a descriptive signification for a Chinese speaking consumer, could be easily registered in the European Union.

For example, the trademark n° 013334801 is registered for the goods “Tofu or bean curd; Fried tofu pieces [Abura-age]; Freeze-dried tofu pieces [Kohri-dofu]” in class 29, while the English translation of the Chinese characters is Tofu.

3. During opposition proceedings, the EUIPO compares the Chinese marks only from a visual standpoint (without taking into account the pronunciation nor the meaning of the marks).

In the case    vs  (Opposition EUIPO No B 3 064 528, 17/10/2019): The Chinese characters of the earlier marks “汾 酒” are fully included within the contested sign . However, the EUIPO held that the signs were different because of their length, overall structure and display direction (horizontal/vertical).

4. During opposition proceedings, if the trademarks are composed of both Latin word and Chinese characters, the latter would be considered as a secondary element.

For example, in the case LOUIS XIII v (OPP 19-0953/MLE; 27/06/2019):  By making a comparison between the verbal elements “LOUIS XIII” and “LOUIS CANTIR”, the French Intellectual Property Office has held that the signs were different. The Office did not mention the presence of the Chinese characters when comparing the marks, thus giving these figurative elements a secondary position (or even, a non-existent position).

5. Pinyin and Latin equivalent of Chinese characters could play a part in the proof of use of a Chinese character mark in the European Union.

In a recent case[5], the French wine producer Castel Freres received a revocation action against their EUTM  (Pinyin “KASITE”) n°006785109, which has been used in relation with Chinese wines (a niche segment on the French wine market). The EUTM   has been always used by Castel Freres on the label of the wine bottles in association with the following elements: Latin words “DRAGON DE CHINE (Dragon of China in French)”, a picture of dragon and its Pinyin “KA SI TE”.

Below three of the labels of wine provided by Castel Freres:

It is worth mentioning the followings points raised by the EUIPO:

  • When purchasing a bottle of wine showing one of the abovementioned labels, French consumers who are aware of purchasing a Chinese wine are “very likely to understand that “KA SI TE” is the Latin equivalent to the Chinese characters” ;
  • As a result, to assess and determine whether or not the use is genuine, all the invoices provided by the wine company that refer to Pinyin “KA SI TE” which is the transliteration of the Chinese characters could be linked to the EUTM  and must hence be taken into account.

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Finally, a summary of legal and commercial advantages/disadvantages when filing a Chinese character marks in the European Union could be presented as follows:

In conclusion, applying for Chinese character marks can neither be perceived as a right nor a wrong filing strategy, as such judgment will always depend on particular context (e.g. kind of products or services concerned, population targeted, whether in B2B or B2C, etc.).

Therefore, from a legal perspective, we consider that there is currently not much sense in filing a wholly Chinese character mark in the European Union.

However, we believe that there is a legal interest in combining both Chinese and Latin characters in the registration or use of a European Union trademark. In that regard, the Chinese characters, even without the Latin ones, could be recognizable and distinguishable by the European consumers (for example, the following part of Uniqlo’s logo “” would easily be recognisable by the non-Japanese speaking consumers). On the other hand, the Latin equivalent of a Chinese mark could be taken into account by the EUIPO when assessing whether the latter has been genuinely used in the European Union by its proprietor (as above-mentioned in the Castel Freres’ recent case).

Due to the increasing expansion of Chinese business activity and tourism in the European Union, along with the important number of Chinese speaking people, we could legitimately imagine some changes in the EUIPO’s practice as well as in European Union Trademark law.

As for instance, we notice that when applying for a figurative trademark before the EUIPO, the platform automatically detects and transcripts some Chinese characters elements of the uploaded picture, as displayed below:

What will be the next steps?

Do not hesitate to contact Inlex Ip Expertise (contact@inlex.com) for further assistance, it would be our pleasure to assist you.

 

Wendy LAM

IP Lawyer

 


[1] Opposition EUIPO No B 3 064 528, 17/10/2019

[2]  OHIM No B 1 196 874, 24/11/2008

[3]  EUIPO Board of Appeal, R 2310/2018-4, 06/08/2019 – Chinese characters, § 25

[4]  EUIPO Board of Appeal, R 2000/2010-4, 03/05/2011 – ‘FORERUNNER’ / ‘FORERUNNER’, § 15; EUIPO Board of Appeal, R 2310/2018-4, 06/08/2019, – Chinese characters, § 24

[5] EUIPO, Cancellation action n° 000022601 C, April 03, 2020. To be continued as the decision is still subject to appeal.

[6] Pinyin is an official tool that defines the pronunciation of each Chinese characters. It represents the official “Latinization” system for Chinese language.

General Court maintains strict approach to assessment of distinctive character

This article first appeared on WTR Daily, part of World Trademark Review, in (February/2020). For further information, please go to www.worldtrademarkreview.com.

On 5 February 2020 the General Court issued its decision in Hickies Inc v European Union Intellectual Property Office (EUIPO) (Case T‑573/18).

Background

On 5 July 2017 Hickies Inc (‘the applicant’) filed an application for the following three-dimensional (3D) trademark for goods in Class 26, including “shoe laces”:

The EUIPO examiner rejected the application on the grounds that it was devoid of any distinctive character. The applicant appealed to the Board of Appeal, which partially confirmed the decision for all products except “shoe eyelets” and “shoe hooks”. The applicant formed an appeal before the General Court.

Decision

The court first recalled that the criteria for assessing the distinctive character of a sign are the same regardless of the type of mark, including 3D signs. In order to have distinctive character, the sign must allow to identify the commercial origin of the products for which registration is sought. The only distinction with regard to 3D signs lies in the fact that the average consumer is not accustomed to presuming the origin of a product on the basis of its shape; therefore, distinctiveness may be more difficult to establish.

Nevertheless, the court stated that, according to case law, a shape mark should not refer to the shape of the product in order for it to have distinctive character: the more the shape resembles the product, the less distinctive it is. Therefore, the fact that a shape is a variant of a common shape for that type of product is

not sufficient to demonstrate the distinctive character of that mark: the difference must be sufficiently significant from the point of view of the relevant consumer.

In the present case, the court considered that the relevant consumer had an average degree of attention – contrary to what was claimed by the applicant, which considered that consumers possess a higher degree of attention in the domain of footwear. As such, the applicant considered that consumers would not perceive the 3D mark as a shoe-fastening system due to its novel character (in other words, it would not be recognised by the relevant public as such shape did not previously exist).

In order to render its decision, the court considered first shoe laces, and then the other goods covered by the application.

The court, considering the definition of ‘shoe laces’, concluding that they are intended to “bring both sides of the upper of a shoe closer together and to keep them attached”. Neither the materials used, nor the type of fastening system, enter into consideration: only the characteristic of maintaining both sides of a shoe attached must be taken into account. The court thus refuted the argument of the applicant, according to which the action of tying a shoelace was an essential characteristic in the determination of distinctiveness, as the mark did not depict such action. Consequently, the court found that the mark was not distinctive in relation to “shoe laces”, as it did not allow for the identification of the commercial origin of the goods.

Regarding the rest of the products covered, the court considered that the same assessment applied as these products designated a system for fastening shoes. Indeed, these goods were simply variants of a shoe-fastening system. Therefore, the sign was devoid of distinctive character for these goods as well.

Finally, the court confirmed that, even though the sign could be used for goods other than those covered by the mark, this could not be taken into account in the determination of the distinctive character of the mark. Only the goods or services covered must be considered.

In light of the above, the court rejected the appeal for all the goods applied for.

Comment

From a practical standpoint, the decision serves as a reminder that new evidence should not be submitted for the first time at the final stage of the proceedings, as it is not the court’s function to assess facts in light of newly-submitted materials. Parties should keep this in mind when progressing through proceedings before the EUIPO and the court.

With regard to the substance of the case, the decision highlights that a 3D mark must be represented in a manner that is far removed from the products covered to avoid being considered as descriptive. The decision follows the general case law of the court, which continues to adopt a strict position concerning the examination and determination of distinctive character.

Therefore, applicants would be advised to file their trademark applications in broader terms and without specifying in great detail the products covered. This would avoid possible complications and challenges by the EUIPO arising from a highly specific wording.

Finally, it should be borne in mind that, in similar cases, a design application may be a better option than a 3D trademark application, as there would be no analysis of the distinctive character and such application would be more difficult to challenge on the basis of a design.

 

The application of the LCEN to a request for the blocking of sites infringing trademarks

In this decision, the Court of Paris was asked to rule on the question whether the owner of an online counterfeit trademark could base his request to block websites on the basis of Article 6.I.8 of the LCEN or whether, according to the adage “Specialia generalibus derogant”, the existence of a specific basis in trademark law prohibits the application of this law.

Read in French here.

A bad grade for Armani

There is nothing wrong the registration of a single letter as a trademark, provided it fulfils its trademark function and be perceived as an indication of origin for consumers. This is not the case for the first, and one of the most used letters of our Latin alphabet, reproduced without stylistic effort.

This cancellation decision is also an opportunity to recall how important the nature and quality of the documents submitted to demonstrate the acquisition of the distinctive character of a trademark are. Yet another fine example of a biter being bit !

Only available in French