AFD China Wins a Case on the Determination of Distinctiveness against TRAB
In this case, the client’s application for registration of a word & device mark in Class 39 (transport services, chauffeur services, organization tourism services, etc.), represented by another IP firm, was refused by the Chinese Trademark Office. The client then, through this IP firm, filed the review application to request the Trademark Review and Adjudication Board to reverse the refusal decision of the Office. The Board refused the client’s registration application based on the holding that the word & device mark does not possess distinctiveness to be registerable.
The client then came to us for further assistance and actions. Our prosecution team (AFD) and litigation team (BHTD, our sister general law firm) jointly worked on this case, reviewing decisions, all documents and evidence and doing further research for further evidence. We believed there was still sufficient space to challenge the Board’s decision, so we suggested instituting an administrative lawsuit against the Board’s decision.
In the administrative lawsuit we presented the arguments with evidence mainly in the three aspects: (1) the word & device mark per se is distinctive, in which (a) with respect to each of ten non-distinctive points in the Review Guidelines, the mark is compared and analyzed to support the distinctiveness ground, (b) the configuration of the mark is analysis for distinctiveness, (c) the mark has been approved for registration in other class, and (d) the distinctiveness of this mark is increased by widely use for years; (2) other marks with similar configuration have been registered by the Office, so the configuration of this mark should be not the ground for lack of distinctiveness; and (3) the contrary determination of the distinctiveness for marks with similar configurations made by the Board under the same laws is unfair to any applicants who respect laws and actively seek protection under laws.
After the trial the court ruled in favor of our client and reversed the decision of the Board.