A Color Combination Trademark Application Failed To Be Approved In The Second Instance Appeal

• Published date: 05 April 2024
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Beijing East IP Law Firm
• Author: Beijing East IP Law Firm

A company applied for registration of the "" mark ("Disputed Mark") on "agricultural machinery" on November 1, 2021, and was refused. During the review, the CNIPA determined that the representation of the Disputed Mark is simple, it will be difficult for the relevant public to recognize it as a trademark to distinguish the source of the goods if registered on the designated goods. The submitted evidence, including the product promotional videos and brochures, the market share of its product from the China Agricultural Machinery Industry Association, statements on sales, store photos, audit reports, tax payment certificates, honorary certificates, award certificates, exhibition and campaign pictures, articles on periodicals and magazines, CCTV news reports, etc., are insufficient to prove that the Disputed Mark has been used to obtain distinctive features and can easily be identified. Therefore, the Dispute Mark shall be rejected based on Article 11.1.3 of the Trademark Law.

The applicant appealed to the court, and supplemented additional evidence of domestic and foreign sales contracts and invoices, overseas trademark registration certificates, granted invention patent information, etc. to prove that after extensive use and publicity, the Disputed Mark has gained a high reputation and has established a unique corresponding relationship with the applicant, thereby bearing the distinctiveness to identify the source of goods.

The Beijing Intellectual Property Court found that:

First, the Disputed Mark is a color combination consisting of red and light gray. Its color and combination are relatively ordinary, and its expression is relatively common. If the color combination specified by the Disputed Mark is used on "agricultural machinery," the relevant public tends to recognize it as an expression of the appearance and decoration of the goods rather than a mark that distinguishes the source of goods. Therefore, the Disputed Mark does not have the inherent distinctive features that a trademark should...