An Applicant for International Trademark Registration Should Have a Reasonable Chance to Make Supplements and Corrections
——Christian Dior Perfumes LLC v. Trademark Review
and Adjudication Board
[Syllabus]
Where an applicant for an international registration of trademarks has completed international registration procedures for pursuant to Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and performed the representation and statement obligations set out in Article 13 of the Implementing Regulations of the Trademark Law of the People’s Republic of China, the application procedures should be deemed as fundamentally complete. Where the application documents only lack procedural elements within the meaning of the Implementing Regulations of the Trademark Law, such as partial views, the competent trademark authority should adhere to the principle of performing the obligations under international agreements and give the applicant a reasonable chance to supplement and correct.
[Case No.] Supreme People’s Court (2018) ZGFXZ No. 26
[Cause of Action] Administrative dispute of reviewing the rejection of trademark application
[Collegial Panel Members] Tao Kaiyuan Wang Chuang
Tong Shu
[Keywords] Trademark, administrative lawsuit, international registration and extension of territorial protection
[Relevant Legal Provisions] Articles 13 and 52 of the Implementing Regulations of the Trademark Law of the People's Republic of China
[Basic Facts]
The trademark at issue international registration number 1221382 (as shown in the picture below), for which the applicant is Christian Dior Perfumes LLC (“Dior”). The country of origin for the trademark at issue is France, with approved registration date: April 16, 2014 and international registration date: August 8, 2014. The international registration owner is Dior, and the designated products include perfumes and heavy perfumes.
After the trademark at issue had been registered internationally, according to relevant provisions in the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Dior applied to the International Bureau of World Intellectual Property Organization (hereinafter referred to as International Bureau) for an extension of territorial protection to Australia, Denmark, Finland, England, China, etc. On July 13, 2015, the Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as “CTMO”) issued to the International Bureau a notice of rejection and rejected the application for the extension of territorial protection over all the designated products in China on the grounds that the trademark at issue lacks distinctive features. Within the statutory time limit, Dior appealed to the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (“TRAB”). TRAB concluded that the trademark at issue is not capable of distinguishing the source of goods and lacks distinctive features. Therefore, TRAB issued No. 13584 Decision, rejecting the application for the extension of territorial protection over the trademark at issue in China. Dior was dissatisfied with the decision and thus filed an administrative lawsuit. Dior argued: 1) the trademark at issue is a three-dimensional mark in a specific color, for which Dior had submitted to TRAB the three-view drawing of the trademark at issue, but TRAB made the decision on incorrect factual basis by taking the trademark at issue as an ordinary trademark. 2) the trademark at issue has a unique design which becomes very significant after long-term efforts of Dior to promote and market it, so the application for the extension of territorial protection should be approved.
Holding
Neither Beijing Intellectual Property Court nor Being High People’s Court upheld the claims of Dior on account of the following: Dior did not state to the Trademark Office that the trademark at issue is a three-dimensional mark or submit trademark designs including three-view drawing at the minimum, within 3 months after the date when it had been registered with the International Bureau, but until the phase of the review of the refused trademark when the first supplementary reasons were submitted. In the case where Dior did not state that the trademark at issue is a three-dimensional mark or submit relevant documents, the Trademark Office did not err in taking the trademark at issue as an ordinary graphic trademark. Whether the Trademark Office had errors in recording the designated color, mark form and other information the trademark at issue in the register of trademarks is out of the issues of this case, and Dior may seek relieves in any other form. Dior refused to accept the second-instance judgment and filed a retrial application with the Supreme People's Court. The Supreme People's Court issued (2017) ZGFXS No. 7969 Administrative Ruling on December 29, 2017 to hear the case, and issued (2018) ZGFXZ No. 26 Judgment on April 26, 2018, overruling the first-instance and second-instance judgments and the decision appealed against, and ordering TRAB to render a new review decision.
[Reasoning]
The effective ruling of the court indicates, as made clear in the international registration information of the trademark at issue, the designated trademark type of the trademark at issue is “a three-dimensional mark” with specific description of the three-dimensional form. Without contrary evidence, the record concerning specific trademark type in the international registration information of the trademark at issue should be deemed as a statement of Dior that the trademark at issue is a three-dimensional mark. It can also be reasonably presumed that when the application is filed for an extension of territorial protection over the trademark at issue in China, the application information transmitted by the International Bureau to the Trademark Office is as the same as above, so the Trademark Office should have known the information above. The applicant for the international registration is not required to file a registration application to a designated country, so the International Bureau is responsible for transmitting the information of the trademark at issue to the Trademark Office. The CTMO is the one to hear and decide the factual basis for the application for the extension of territorial protection over the trademark at issue in China. According to existing evidence, the trademark type of the trademark at issue over which the territorial protection is applied in China is “a three-dimensional mark”, other than “an ordinary trademark” acting as the basis to be reviewed by the CTMO and TRAB as recorded in the register of the CTMO. In the review procedure, Dior made it clear that the specific type of the trademark at issue is a three-dimensional mark, and proposed the request to supplement and correct by additionally submitting the three-view drawing. However, TRAB did not keep true records in No. 13584 Decision, and did not verify whether the facts on which the CTMO had made the decision of rejection were problematic with respect to the abovementioned claim proposed by Dior. TRAB still took the trademark at issue as "a graphic trademark" and simply rejected the review application from Dior, which violates the legal procedure and may impair the legal benefits of the administrative counterpart and should be corrected. In accordance with the review procedures, the CTMO and TRAB should, on the basis of a three-dimensional mark, re-check whether the trademark at issue lacks distinctive features.
The Madrid Agreement Concerning the International Registration of Marks and its Protocol are designed to establish international cooperation mechanism, establish and improve procedures for international registration of trademarks, reduce and streamline registration procedures and provide applicants with convenience to obtain trademark protection at the lowest cost in any country. On the facts of the case, as the trademark at issue is under application for the Madrid International Registration with China designated for territorial extension, relevant application documents should be transmitted by the International Bureau to the CTMO. It can be reasonably presumed from existing evidence that, in the international trademark registration procedures, Dior has made a statement that the trademark at issue is a three-dimensional mark, made clear the specific use of the trademark at issue, and submitted the one-view drawing of the trademark at issue. Where the application documents only lack procedural elements within the meaning of the Implementing Regulations of the Trademark Law, such as partial views, the competent trademark authority should adhere to the principle of performing the obligations under international agreements and give the applicant a reasonable chance to make supplements and corrections. In this case, the CTMO did not keep true records of the statement made by Dior as to trademark type in the international registration procedure, did not give Dior a reasonable chance to make supplements and corrections. Without the parties’ requests or factual facts, it flatly changed the trademark at issue to an ordinary trademark, and carried out an examination decision to the disadvantage of Dior, and TRAB’s failure to make corrections lacks either factual and legal basis. These acts may impair reasonably expected benefits of the administrative counterpart and should be corrected.
Therefore, TRAB should, based on the reasons for retrial as proposed by Dior in respect of the trademark type, correct the improper affirmation of the CTMO, and re-check whether the application for an extension of territorial protection over the trademark at issue in China shall be approved, according to the standards to assess whether the three-dimensional trademark has distinguishing features. In the retrial process, the CTMO and TRAB shall focus on: 1) the distinctiveness of the trademark at issue and the distinctiveness derived from use of the trademark at issue, particularly the time when the trademark at issue enters in the Chinese market, actual use, promotion and marketing that can be proved by existing evidence, and the possibility that the trademark at issue identifies the source and function of the product; and 2) the principle of unified assessing standards. In the review and judicial procedures, despite the necessity to consider the circumstances of an individual case, the basic standards for review should be the Trademark Law and other relevant administrative regulations, and the principle of unified standards should not be abandoned for any individual case.
