Yongjian Lei April 16 2018 Is your trademark a word mark, a device mark or both? Wanhuida Intellectual Property | Intellectual Property - China Yongjian Lei Intellectual Property Chinese examination frameworkLacoste caseProposed solutionThe question of how stylised word marks should be examined often arises. One solution proposed under the Chinese legal framework is to treat such marks as composite trademarks that comprise both a word and a device mark and thus subject them to substantial examination as both.Chinese examination frameworkIn China, word and device marks are examined separately. If a trademark comprises English letters or Chinese characters, it is treated as a word mark and will be compared with other prior word marks to determine whether similar prior trademarks exist. If a trademark is a device mark, it will be compared with prior device marks in accordance with the International Classification of the Figurative Elements of Marks (the Vienna Classification). For composite trademarks that combine both word and figurative elements, the mark's word and device elements will be examined separately. This system seems scientific and reasonable and has worked well for many years. However, it assumes that a trademark, or a trademark element, is either a word or a device. What if it is both?Lacoste caseAn applicant filed a trademark application for a mark (Figure 1) composed of three stylised Chinese characters (Figure 2).Figures 1 and 2Together, these three characters, pronounced "Ming Xi Long" in Chinese pinyin, have no specific meaning in Chinese. When the applicant filed its application, the China Trademark Office viewed it as a word mark composed of three characters, even though the word meant nothing in Chinese. As such, the application was approved and published.However, considering the visual arrangement of these three characters, it is clear that the applicant did not intend to protect the Chinese word. Rather, the mark's visual effect renders it a device mark and not a word mark (even more so because the word is meaningless).This device is confusingly similar to Lacoste's well-known crocodile device mark (Figure 3), especially when it is used on an actual product (Figure 4).Figure 3Figure 4After the trademark's publication, Lacoste raised an opposition, citing its crocodile device trademarks. It received a favourable decision from the China Trademark Office, which confirmed the marks' similarity.If this were an isolated case, it would be unremarkable, as the well-functioning opposition system successfully caught the escaped crocodile on this occasion. Unfortunately, as infringers and trademark squatters now actively exploit this loophole in the trademark examination procedure, the number of these types of mark filed with the China Trademark Office each year is growing at an alarming rate. The following examples provide a glimpse of this thriving practice (Figure 5).Figure 5Although Lacoste has a high success rate in opposing most of these applications, the ceaseless publication of similar stylised 'word marks' has led the brand owner to waste a significant amount of money and administrative resources in repeated oppositions.Proposed solutionA proposed solution under the Chinese trademark legal framework would be to treat such stylised word marks as composite trademarks, comprising a word and a device mark, and subject them to substantial examination as both. This would improve the accuracy of trademark examinations and would align with the current judicial initiative to tackle bad-faith trademark applications.For further information on this topic please contact Yongjian Lei at Wanhuida Peksung by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Peksung website can be accessed at www.wanhuida.com and www.peksung.com.