The figurative trademark "" (hereinafter referred to as the "Disputed Trademark") of the applicant for retrial, Zhongshun Jierou Paper Co., Ltd. (hereinafter referred to as "Jierou Company"), was approved for registration on May 7, 2011, and authorised for use on goods in Class 16, including "tissue paper, toilet paper."

On March 1, 2021, a paper company filed an application for declaration of invalidity of the disputed trademark, alleging lack of distinctiveness and occupation of public resources, pursuant to Article 4, Article 11(1)(i) and (iii), and Article 44(1) of the Trademark Law of 2013. The China National Intellectual Property Administration (hereinafter CNIPA) issued a decision upholding the registration of the disputed trademark. The paper company appealed to the Beijing Intellectual Property Court and then to the Beijing High People's Court. The court of first instance dismissed the appeal. The Beijing High People's Court, however, held that the disputed trademark was more likely to be perceived by the relevant public as product decoration on the designated goods, failing to distinguish the source of goods and lacking inherent distinctiveness. Furthermore, the evidence submitted by Jierou Company was insufficient to prove that the disputed trademark had acquired distinctiveness through use. Therefore, pursuant to Article 11(1)(iii) of the Trademark Law, the Beijing High People's Court reversed the first-instance judgment and the contested ruling. Jierou Company appealed the second-instance judgment to the Supreme People's Court (hereinafter SPC), requesting a retrial.

The SPC conducted that the distinctiveness of a trademark symbol itself should be assessed holistically. As long as the symbol is sufficient to identify the source of goods or services, and the relevant public can recognise the source of goods through it, it should be deemed to possess distinctiveness. In other words, as long as the trademark can fulfil the function of identifying the source of goods or services, it should be recognised as having distinctiveness. Second, the assessment of distinctiveness should be made in conjunction with the designated goods or services. Generally, the weaker the association between the mark and the designated goods or services, the stronger its distinctiveness; conversely, the stronger the association, the weaker its distinctiveness. In this case, the disputed trademark consists of a rectangular, symmetrical graphic divided into three sections, with colours specified for both the larger central area and the two narrower side sections. Given the colours and layout specified for this graphic, it possesses a certain degree of design aesthetic and meets the requirement for distinctiveness to identify the source of goods or services. Moreover, the evidence on file fails to demonstrate a close association between the disputed trademark and the designated goods "toilet paper," indicating a lack of distinctiveness.

This case holds significant reference value for determining the inherent distinctiveness of figurative trademarks.

Source:
https://mp.weixin.qq.com/s/ROG5nC_KTFw0W6T3w8ukAQ   (Chinese)