Mingming Yang October 18 2021 Stihl successfully invalidates infringer's colour combination mark Wanhuida Intellectual Property | Intellectual Property - China Mingming Yang Intellectual Property FactsDecisionCommentThe registration and protection of non-traditional trademarks has always been a challenge for brand owners. Since most non-traditional trademarks are often perceived as being devoid of inherent distinctiveness, brand owners need to provide a substantial amount of evidence to prove that the applied mark has acquired distinctiveness through extensive use.FactsAndreas Stihl Ag & Co Kg obtained the registration of its orange and grey colour combination trademark on "chain saws for forestry and horticulture" in August 2015 (Figure 1). In January 2019, Stihl further confirmed the protection of this colour combination and secured the registration of an abstract trademark showing, in the form of blocks, the orange and grey colours.However, during an infringement action against a repeat infringer, Stihl was surprised to discover that the infringer had submitted as defence a trademark registration certificate relating to a colour combination trademark consisting of the colours orange, grey and black (Figure 2). The trademark had been registered on 7 November 2015, in class 7, covering goods including:lawnmowers [machines]; reapers; sprayer (machine); agricultural machines; agricultural implements other than hand-operated; saws [machines]; woodworking machines; tea manufacturing machine; hand-held tools, other than hand-operated; axles for machines. Figure 1: cited trademarkFigure 2: disputed trademarkOn 14 November 2019, Stihl initiated an invalidation proceeding with the China National Intellectual Property Administration (CNIPA) against the aforementioned colour combination trademark, citing its own prior registration of August 2015.DecisionIn December 2020, the CNIPA upheld Stihl's grounds and invalidated the disputed colour combination mark.The CNIPA stated that a colour combination is usually perceived by the public as the decoration of a product, rather than as a trademark. However, a colour combination can be registered as a trademark if it has acquired a sufficient level of distinctiveness through use. In this case, the CNIPA found that the evidence submitted was insufficient to prove that the trademark could be deemed a source identifier for the registrant's products. The trademark was, therefore, unregistrable for lack of distinctiveness.The CNIPA also found that the goods covered by the disputed trademark were similar to that of the cited trademark, and that the colour combination itself (orange-yellow, milk white and black), was similar to the cited orange and grey trademark. Thus, the disputed mark and the cited mark constituted similar marks on similar goods, which violated article 31 of the Trademark Law.CommentWhat is intriguing in this case is that the registrability of the disputed trademark was never challenged by the examiner during the registration process. Indeed, in practice, examiners do not accept a "blank" colour combination trademark without evidence of acquired distinctiveness, and without a statement showing how the applied combination of colours is to be applied on the products designated by the application.In this case, it seems that the filing document of the disputed trademark did not meet the usual requirements for a colour combination trademark. According to the Trademark Examination Criteria published by the CNIPA, a trademark application for a colour combination must show that the sign has acquired distinctiveness via extensive use and advertising. The trademark description of the disputed trademark described the colours but remained vague about the manner in which they were to be used:the applied trademark is a combination of orange-yellow (Pantone CIO, M80, Y100, K0), milk white (Pantone CO, MO, Y5, K10) and black (Pantone C75, M68, Y67, K89), which are respectively used for cylinder head cover and air filter cover, rear handle and box body, front handle and brake baffle. However, the application designated a much wider range of goods, and the description apparently failed to show how the colours were to be used on all of the designated goodsThough the CNIPA has set out in its Trademark Review and Adjudication Criteria factors to be considered in the formality examination of non-traditional trademarks, due to the possibility that examiners could interpret these factors in different ways, it would be worthwhile introducing some general principles to help harmonise examination practice.The absolute ground of lack of distinctiveness would have been sufficient for invalidation. Nevertheless, the CNIPA also added some comments on the similarities between the cited and disputed trademarks and stated that the comparison should be made by comparing the ways in which the colours are combined and used, rather than by dwelling on the nuances of the colours. This practice is in line with a judgment made by the Beijing IP Court on 27 October 2019 (Roxtec AB v Mikael Helmerson) where the Court found infringement, despite the fact that the blue colour used by the infringer was not exactly identical to that of the cited mark. The Court opined that it would be difficult for the relevant public to perceive the nuances when paying an average level of attention.For further information on this topic please contact Yang Mingming at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.