The first battle of trademark registration defense has been won! ——At what point should the distinctiveness of a trademark be judged? This case provides the answer

Recently, Sun Chengyao, the director of Nanjing Leyu Zhixing Patent Agency, together with Meng Tan, Liu Qi and Mou Xiaoyu, the trainee lawyers of Jiangsu Rayto Law Firm, jointly represented the respondent in the case of invalidation of registered trademarks, and received a ruling from the China National Intellectual Property Administration that the disputed trademarks remain valid.

The disputed trademark involved in this case (as shown below) is registered in 0601, ordinary metal alloy; Metal sheets and metal plates; 0603, metal scaffolding; Metal building materials; Metal scaffolding fasteners. The applicant believes that the disputed trademark is only composed of standardized fonts in English and numbers, and lacks distinctiveness when used on the designated goods. The relevant public will consider the disputed trademark as a type of steel reinforcement and cannot identify the source of the goods. They have submitted technical standards that record the disputed trademark as evidence, attempting to prove that the disputed trademark is a steel grade.

Disputed trademark involved in the case

For trademarks, distinctiveness is crucial, as it is not only a prerequisite for obtaining trademark registration, but also a key factor for trademarks to play an identifying role in the market environment. A trademark lacking distinctiveness, even if registered, can be declared invalid by the Trademark Office in accordance with the law. Any other unit or individual can also request the Trademark Review and Adjudication Board to declare the registered trademark invalid. Article 11 of the Trademark Law (2019 Amendment) clearly stipulates that the following signs shall not be registered as trademarks: (1) those that only have the common name, graphics, or model of the goods; （2） Directly indicating the quality, main raw materials, functions, uses, weight, quantity, and other characteristics of the product; （3） Other lacking significant features. The marks listed in the preceding paragraph that have acquired significant features through use and are easy to identify can be registered as trademarks. Article 44, Paragraph 1 of the Trademark Law stipulates that if a registered trademark violates the provisions of Article 11 of this Law, the Trademark Office shall declare the registered trademark invalid; Other units or individuals may request the Trademark Review and Adjudication Board to declare the registered trademark invalid.

Distinctiveness is a necessary requirement for trademark registration, and the lack of distinctiveness is an absolute reason for requesting the invalidation of a trademark. This reason does not limit the subject identity of the invalidation requester, so the lack of distinctiveness has become a common reason for trademark invalidation. Due to the fact that the distinctiveness of a trademark is not fixed and may change over time, it may become increasingly prominent after long-term use, or it may lose distinctiveness due to improper use. So, what point in time should be used as the standard for determining significance. When applying for trademark registration? When obtaining trademark registration? When making a request for invalidation? Or when the China National Intellectual Property Administration ruled that the trademark was invalid? Using different time points as criteria for judgment may result in different outcomes.

In the above-mentioned case of invalid disputed trademarks, in response to the claim made by the applicant that the disputed trademark would be recognized by the relevant public as a type of steel bar or steel plate, and therefore obviously lack distinctiveness, our lawyer proposes that the examination and judgment of trademark distinctiveness should be based on the factual status at the time of trademark application. The evidence submitted by the applicant should be formed later than the date of application and registration of the disputed trademark, and should not be used as a basis for judging whether the disputed trademark has distinctiveness. At the same time, a large number of cases, national standards, etc. have been submitted as evidence to further demonstrate that the disputed trademark has distinctiveness at the time of application. The disputed trademark has a clear difference from the steel plate number form specified in the national standard at the time of application and is completely designed by the respondent, which is different from any other steel plate number. The numbering format, The disputed trademark will not be mistaken as a steel grade by the relevant public in this field, so it has significance.

conclusion

Finally, the China National Intellectual Property Administration recognized and supported our point of view. In the ruling on maintaining the validity of the disputed trademark, it was determined that: among the relevant evidence submitted by the applicant, the implementation time of the engineering construction standards issued by each province was later than the registration application date of the disputed trademark, and the remaining evidence submitted by the applicant was not enough to prove that the trademark logo involved in the case was used as a trademark registration in approved commodities such as "ordinary metal alloy" without obvious characteristics. Therefore, the registration of the disputed trademark did not violate the provisions of Article 11 (1) (3) of the 2013 Trademark Law.

At what point should the distinctiveness of a trademark be judged? This case provides a clear answer: in the process of trademark invalidation, the factual status at the time of trademark application should be used as the time standard for determining the distinctiveness of the trademark, and evidence after the trademark application date should not be used as the basis for determining the distinctiveness of the trademark.