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Beijing IP Court rejects TM registration of 'PARIS BAGUETTE'

Recently, Beijing IP Court made a first-instance judgment on an administrative case for invalidation of the trademark 'PARIS BAGUETTE'. The court held that the registration of the trademark was subject to the absolute terms enjoining registration under the Chinese Trademark Law and rejected the decision of upholding registration of the trademark made by the then Trademark Review and Adjudication Board of the former State Administration for Industry and Commerce (TRAB), ordered it to make a new decision.

In 2004, the South Korean company Paris Croissant entered the Chinese market and opened the first 'PARIS BAGUETTE' bakery in Shanghai with the corresponding Chinese name "巴黎贝 甜 ". Later on, the Korean company set up Esprit Foods Co., Ltd. (Esprit Foods) in China and awarded an exclusive license to Esprit Foods for the use the trademarks "巴黎贝甜" and 'PARISBAGUETTE' and to manage and operate the trademarks.

In September 2007, Paris Croissant Co., Ltd. applied for the registration of the trademark 'PARIS BAGUETTE' in China and would eventually obtain registration on Class 30 goods including bread in March 2015 after wading through post- rejection review and opposition proceedings.

However, Paris Croissant Co., Ltd. only owns the English trademark of 'PARIS BAGUETTE' in China, and the corresponding Chinese trademark " 巴黎贝甜" has yet been approved for registration. In the meantime, 'PARIS BAGUETTE' has been under constant nullity attack since its registration by several companies including Bejing Bali Beitian (Note: Chinese name "芭 黎 贝 甜 ", only the first Chinese character different from "巴黎贝甜") Enterprise Management Co., Ltd. (Bejing Bali Beitian).

The then- TRAB found that the trademark in question is composed of the words 'PARIS BAGUETTE' and its figure. Although the words can be translated as 'French bread', the disputed trademark still has other elements which shows distinctiveness to some extent if viewed as whole; Taking into account that the trademark in question has been registered and used for many years and a relatively stable market complexion has been formed through publicity and use, the then- TRAB upheld the registration of the trademark.

The disgruntled Beijing Bali Beitian then brought the case to Beijing IP Court in August 2018, requesting the court to revoke the TRAB ruling.

Beijing IP Court held that the country of the trademark applicant is South Korea, not France. The dispute trademark is composed of English words 'PARIS' and 'BAGUETTE' and a figure similar to the iconic Eiffel Tower in Paris, France, among which 'PARIS' means Paris and 'BAGUETTE' means French bread or French- style baguette. The use of the trademark on the designated class of goods may easily cause the relevant public to mistakenly believe that the origin of the goods is related to Paris, France. The court also held that the trademark in question constituted a situation that was not allowed to be registered as a trademark under the Chinese Trademark Law.

In this connection, Beijing IP Court made its first-instance decision, revoking the TRAB decision in upholding the registration of 'PARIS BAGUETTE'.

As of now, the case is still open for appeal and we will follow its developments

Source: China Intellectual Property News, CNIPA

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