The Trademark Review and Adjudication Board (TRAB) has ruled that STIHL's orange and grey colour combination is registrable in China, since it has acquired distinctiveness through long-term, extensive use.

Background

Article 11 of the Trademark Law provides:

"Any of the following marks shall not be registered as a trademark:

(1) those consisting only in the generic names, designs or models of the goods in respect of which the trademark is used;

(2) those only having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademark is used; and

(3) those lacking in distinctive features.

Any of those marks mentioned in the preceding paragraphs can be registered as a trademark only after it has acquired distinctiveness and has become easily distinguishable through use."

Facts

ANDREAS STIHL AG & CO KG is the world's leading manufacturer of chainsaws and power tools. STIHL distributes its products through a network of 40,000 dealers in more than 160 countries and has been the global top-selling chainsaw brand since 1971.

In 1995 STIHL established a wholly owned subsidiary in China, opening chain stores and providing after-sale service to consumers. In 2005 STIHL set up a large production base in Qingdao, Shandong Province. With continuous development over the past 20 years, STIHL's products are now sold in most cities and provinces in China, claiming over 50% market share for high-end chainsaw products.

Since 1972, STIHL has been using the orange and grey colour combination on its chainsaws and power tools (see Figure 1 below). After continuous use in China and around the world, the orange and grey colour combination has become the defining symbol of STIHL and its products.

Click here to view image.

On February 22 2011 STIHL filed an application for registration of the orange and grey colour combination mark in respect of chainsaws for forestry and gardening with the China Trademark Office (CTMO). The CTMO refused the application, citing Article 11.1.(1) of the Trademark Law (ie, the trademark constituted only the generic design of the goods).

In September 2011 STIHL appealed to the TRAB on the following grounds:

  • The applied-for trademark was a colour combination, not a device mark; therefore, the CTMO's refusal based on the finding that the trademark was a generic design of the designated goods was erroneous.
  • The orange and grey colour combination mark was sufficiently distinctive for the relevant public to identify and distinguish STIHL's products from those of other manufacturers.
  • After long-term use and promotion, the orange and grey colour combination – which has been used on STIHL's chainsaws since 1972 – has:
    • formed an exclusive, continuous association with its designated goods;
    • become known by the relevant public in China; and
    • acquired secondary meaning that further enhances its distinctiveness and recognisability.

STIHL submitted substantial evidence to support its arguments, including:

  • in-depth market awareness surveys on the association between the applied-for colour combination trademark and STIHL's chainsaw products;
  • insider affidavits attesting to the trademark's distinctiveness;
  • promotional and advertisement campaigns; and
  • administrative penalty decisions issued by local administrations for industry and commerce against copycat chainsaws (for further details please see "STIHL's colour combination trade dress obtains judicial protection").

On January 20 2015 the TRAB upheld STIHL's arguments, preliminarily approving the application for the orange and grey colour combination mark. After the three-month publication period, the mark was registered on August 14 2015.

Comment

The Trademark Law 2001 allows colour combinations to be registered as trademarks. Nevertheless, since colour combination trademarks are normally deemed to be inherently non-distinctive, it is an arduous task for the applicant to prove that the colour combination has acquired secondary meaning through extensive use and advertisement.

For further information on this topic please contact Mingming Yang at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email (yangmingming@wanhuida.com). The Wan Hui Da Law Firm & Intellectual Property Agency website can be accessed at www.wanhuida.com.

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