The Trademark Review and Adjudication Board (TRAB) found that the “orange and gray” colour combination, since it has acquired distinctiveness through long-term and extensive use, is registrable in China.

The relevant legal background is Article 11 of the Trademark Law:

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.

Case Summary

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

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

Since 1972, STIHL has been using the “orange and gray” colour combination on its chainsaws and power tools. After continuous use in China and around the world, the “orange and gray” colour combination has become the symbol of STIHL and its products.

On February 22, 2011, STIHL filed an application for registration of the “orange and gray” colour combination mark in respect of the chainsaws for forestry and gardening with the China Trademark Office (CTMO).  The application was refused by the CTMO who cited Article 11.1.(1) of the Trademark Law (the trademark is only constituted of the generic design of the goods).

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An illustration of STIHL’s Applied Trademark

In September 2011, STIHL appealed to the Trademark Review and Adjudication Board (TRAB) on the following grounds:

  1. The applied trademark is a colour combination, not a device mark, therefore the CTMO’s refusal decision based on the finding that the applied trademark is the generic design of the designated goods, is erroneous;
  2. The applied trademark, which is the combination of orange and gray colour is distinctive enough for the relevant public to identify and distinguish STIHL’s products from other manufacturers’ products;
  3. The applied “orange and gray” colour combination, which has been used on STIHL’s chainsaws since 1972, has after long-term use and promotion, a) formed exclusive and constant association with its designated goods; b) become known by the relevant public in China and c) acquired secondary meaning that further enhances its distinctiveness and recognizability.

To support the review arguments, STIHL furnished among others, preponderant evidence including in-depth market awareness survey on the association between the applied 

colour combination trademark and STIHL’s chainsaw products, insider’s affidavits vouchering the distinctiveness of the applied trademark, promotion and advertisement evidence, as well as the administrative punishment decisions issued by the local AICs against copycat chainsaws in China.

The TRAB upheld STIHL’s arguments and ruled on January 20, 2015 to preliminarily approve the application of the “orange and gray” colour combination mark.  After the three-month publication period, the “orange and gray” colour combination mark was registered on August 14, 2015.

WAN HUI DA represented STIHL in the review proceeding.

Comments:

The Trademark Law (2001 version) allows colour combinations to be registered as trademark. Nevertheless, since colour combination trademark is normally deemed as inherently non-distinctive, it is an arduous task for the applicant to prove that such colour combination has acquired a “secondary meaning” through massive use and advertisement.