The disputed trademark No. 1494687 “smart” in class 32 is held by Coca-Cola on the goods of beer, non-alcohol drinks, water, etc. You may know the Chinese-equivalent brand “醒目”(meaning: eye-striking) for its soft drinks. “Smart”, however, was disputed by Watson Enterprises Limited (hereinafter “Watson”) in 2003, which is the brand owner for “Smart Qool” on its barreled drinking water, with “smart” standing out in the major portion. In the final ruling over the administrative IP case, Beijing High People’s Court held that the disputed “smart” shall stay valid on “insufficient factual and legal grounds for indistinctiveness”.
Back in February 2009, the TRAB decided that the disputed “smart” is not merely straight descriptive on the designated goods of beer, non-alcohol drinks, etc., according to the definition of “tidy, brilliant, fashionable, swift” borne in Oxford Advanced Learner's English-Chinese Dictionary (6th edition) published by the Commercial Press and Oxford University Press. Therefore, “smart” shall be sustained, as no facts are in support of the lack of distinctiveness and the grounds for dispute shall not stand. In view of the aforesaid, Watson lodged an administrative lawsuit to Beijing No. 1 Intermediate People’s Court, which thereafter upheld the TRAB’s decision. Watson followed with an appeal to Beijing High People’s Court, notwithstanding; the ruling came final as “appeal dismissed and decision sustained”.
Comments: The focus of the mark disputes between Watson and Coca-Cola is whether the disputed “smart” is merely straight descriptive on the designated goods. The criteria for distinctiveness shall stand on the common general perception of the designated goods using the mark. In the present dispute, the English word “smart”, though intrinsic in its meaning, is workable for identification with the soft drinks by the general public, thus not affected in terms of distinctiveness.
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(Extract from 2012 Trademark Casebook with Comments)