“ARC’TERYX”and “ click here to view the image” (hereinafter “the Cited Marks”), created and used by ARC’TERYX Company, have enjoyed a high reputation in respect of outdoor clothing, technical outerwear and accessories. The inspiration of the brands was originated from “Archaeopteryx”. “ARC’TERYX”is the unconventional abbreviation of “Archaeopteryx” and “ click here to view the image ”is the most complete and famous archaeopteryx graphics found by archaeologists so far.
The case is an administrative litigation regarding the review on opposition against the trademark application for “ click here to view the image ” (hereinafter “the Opposed Mark”) covering “wedding dress” filed on December 07, 2006. The TRAB held that the Opposed Mark was distinguished from the Cited Marks and the evidence submitted was insufficient to prove that there had been a correspondence established between the Cite Marks and “始祖鸟” (Archaeopteryx in Chinese), therefore it was unlikely to cause confusion even if the marks co-exist. The TRAB decided that the Opposed Mark shall be approved for registration.
ARC’TERYX Company appealed to the Beijing First Intermediate People’s Court. The Court supported the appeal holding that the distinctive parts of the Opposed Mark are the Chinese characters “始祖鸟” (Archaeopteryx in Chinese) and its abbreviation and transcription “SZN SHIZUNIAO”. “Archaeopteryx” is the acknowledged scientific name of the earliest bird ever discovered and its image is built based on the research to its fossil. Although the evidence submitted by ARC’TERYX Company cannot prove that “ARC’TERYX” is the normative and recognized abbreviation of “archaeopteryx”, it can be concluded that through massive use, the Chinese public had recognized “ARC’TERYX” as “始祖鸟” (Archaeopteryx in Chinese). That is to say, the close relationship between the two had been established, and the Opposed Mark and the Cited Marks constitute similar marks in respect of similar goods. Moreover, the application of the Opposed Mark constitutes preemptive application by unfair means of ARC’TERYX Company’s trademark which had been prior used and gained certain influence on clothing products. The court finally overturned the TRAB’s decision and requested the TRAB to render a new one.
King & Wood Mallesons as agent of ARC’TERYX Company participated in this case.
Although there have been a number of successful cases in which the Chinese translations of foreign trademarks are protected, this case is special and difficult. One of the tough issues is that, due to its unconventional abbreviation and transformation, “ARC’TERYX” does not inherently correspond to “Archaeopteryx” and its Chinese translation “始祖鸟”. Apart from proving that the Cited Marks are originated from “Archaeopteryx” and “始祖鸟”, we mainly rely on the evidence showing the high fame of the Cited Marks and the fixed relationship between the Cited Marks and “始祖鸟” established before the filling date of the Opposed Mark among the Chinese public.
The pre-emptive registrations of the Chinese names and translations of world famous brands are quite common. It is normal practice to protect the corresponding Chinese translations of popular trademarks in a foreign language. However, concerning unnormative Chinese translations or non-exclusive transliterations, various factors need to be considered when examining whether they should be protected
According to our experience, the influencial factors include but not limited to the inherent relationship between the Chinese characters and the trademark in the foreign language, the fame of the trademark in the foreign language, the use of the Chinese mark by the owner, the corresponding relationship established between the Chinese mark and the mark in the foreign language, the bad faith, and so on. In business practice, many foreign brands owners do not officially use the Chinese mark on their goods, packages, transactions and advertisements, however, the use of the corresponding Chinese in commerce by the distributors and wholesalers will also help to establish the fixed corresponding relationship.
Based on the above, by considering the evidence showing the use of the Chinese trademark by its distributors and wholesalers the court recognized that “始祖鸟” (Archaeopteryx in Chinese) is the unregistered mark of ARC’TERYX company and the Opposed Mark has constituted preemptive application of this unregistered trademark in bad faith. .
In addition, the court also recognized the similarity of goods in different subclasses, namely “clothing” in Subclass 2501 and “wedding dress” in Subclass 2513. Although the Cited Marks are mainly used on the outdoor clothing and equipment, considering the high originality and distinctiveness of the brand “ARC’TERYX”, the fame it gained, as well as the bad faith of the adverse party, the court recognized these goods are similar, which is also a significant breakthrough.