Beijing High Court allows trademark registration for Chinese equivalent of "Milan"

Introduction
Facts
Decision
Comment

Introduction

Article 10.2 of China's Trademark Law sets out that a foreign geographic name known to the public may not be used as a trademark, unless it has another meaning.

On 12 November 2021, the Beijing High Court overruled an invalidation decision surrounding a trademark registration for "米兰", the Chinese equivalent of "Milan", the geographic name of a famous Italian city. The Supreme People's Court selected this case as one of its annual 50 exemplary IP cases in 2021.

Facts

Jiangxi Milan is a major player in the wedding photography industry in China. Starting off as a supplier of wedding dresses marketed under the brand "米兰" in 1986, it opened a homonymic photography studio in 1996. In 1999, it obtained its first trademark registration for the characters shown in Figure 1 (traditional Chinese for "Milan") designating "photograph shooting".

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Figure 1: Jianxi Milan's first trademark registration

Jiangxi Milan applied in 2010 and obtained in 2012 registration for the simplified version "米兰" (the contested mark) in class 41.

In 2019, a natural person initiated an invalidation action against the contested mark, contending that it is a famous geographic name in Italy and the registration thus breached the absolute ground set out in article 10.2 of the Trademark Law. On 29 October 2020, the China National Intellectual Property Administration (CNIPA) backed the petition and invalidated the contested mark. On 24 June 2021, in the ensuing administrative litigation, the Beijing Intellectual Property Court upheld the CNIPA's invalidation decision. Jiangxi Milan appealed before the Beijing High Court.

Decision

The Beijing High Court overturned the CNIPA's decision.

The legislative purpose of article 10.2 of the Trademark Law is twofold:

• to ensure that the public has freedom of expression over geographic names and prohibit monopoly over public resources; and
• to avoid confusion and misidentification among the public.

A geographic name is registrable on the premise that it has "other meaning" – that is, where the mark:

• has another intrinsic meaning apart from indicating a geographic name; or
• has acquired, through use, a secondary meaning that has been acknowledged by the relevant public.

The plaintiff raised the argument that the contested mark also referred to aglaia odorata, a flower, in Chinese. With regard to this argument, the Court ascertained that it was undeniable that the contested mark was better known as the name of an Italian city among the Chinese public. Therefore, the argument was dismissed.

However, the evidence filed by Jiangxi Milan – including the scale of its business operations in China, its exceptional financial performance, its continuous advertising and promotion campaigns, and the recognition over the visibility of the contested mark by various administrative and judicial authorities – sufficed to attest that stable correspondence had been established between the registrant and the contested mark among the relevant public in China and that the mark had acquired secondary meaning (other than the indication of a geographic name) through extensive use. The Court also affirmed that Jiangxi Milan had no intention to piggyback on the Italian city neither in filing for nor in its actual use of the contested mark.

The Court thus sustained the registration of the contested mark on its core services – namely, "photographic reporting services; photography; microfilming; recording of video tapes; production of video tapes; rental of stage scenery; production of shows; digitalising films". However, it invalidated its registration on the services "translation; rental of cinematographic cameras" for lack of evidence on acquired secondary meaning.

Comment

The case may serve as a point of reference in prosecuting trademarks that contain geographic names in China. Practitioners may resort to the parameters set forth by the Beijing High Court in assessing the registrability of such a mark:

• If the public has an equivalent or higher degree of familiarity over the mark's "other intrinsic meaning" than its geographic name indication, the mark is registrable provided that evidence can be furnished to prove its inherent distinctiveness.
• If the public has a significantly lower degree of familiarity over the mark's "other intrinsic meaning" than its geographic name indication, the mark is registrable provided that it has acquired secondary meaning through extensive use and may serve as a source identifier.

In practice, the CNIPA tends to ex officio reject trademark applications that are geographic names or that have geographic name components. Brand owners are advised to check with their local counsel before filing for such a trademark in China. Those who have managed to secure a registration are advised to take extra precautions during the actual use of the mark and consciously distance the mark from the geographic name to avoid creating undue association or confusion over the source of origin.

For further information on this topic please contact Ye Cai or Yongjian Lei at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected] or [email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.

This article was first published by IAM.