CyberLink, established in 1995, is a Taiwan audio and video software company with top audio and video technology, specialized in research and development of digital audio and video software and multi-media streaming application solutions. It is a well-known software manufacturer in Taiwan, and its enterprise logo "CyberLink" enjoys high popularity in the software related industries.
CyberLink applied for registration of the trademark No. 9400004 "CyberLink AudioDirector" and designated the goods of "floppy disks, computer software (recorded), computer software (recorded) optical disks, data processing equipment, computers, computer peripherals, word processors, notebook computers and computer peripheral equipment" in Class 9. China Trademark Office (CTMO) as well as Trademark Review and Adjudication Board (TRAB) refused the trademark on the ground that the trademark lacks the due distinctiveness when used on the designated goods such as data processing equipment and computer peripheral equipment, constituting the circumstance specified in Article 11(1)(III) of Trademark Law. In the subsequent administrative lawsuit, Beijing No.1 Intermediate People's Court upheld the TRAB decision of refusal.
Unitalen attorneys, after thorough communication with the applicant and analysis of this case, filed an appeal at Beijing People's High Court based on the grounds that the mark at issue was created by the applicant CyberLink without any fixed meaning in translation; it bears strong distinctiveness for relevant public in China; "Cyberlink" was the English trade name of the applicant and has been used for long time, while "AudioDirector" was the core audio editing software product line of the applicant; upon extensive and long-term use by the applicant, the distinctiveness of the trademark has been further strengthened; either "Cyberlink" or "AudioDirector" alone had produced a direct association with the trademark applicant, and the trademark as a whole is even more distinctive when used on the designated goods, fully able to play a role in distinguishing from other trademarks.
In addition, Unitalen attorneys provided evidence showing the applicant’s other trademarks with similar word composition and combination mode, e.g. "Cyberlink WaveEditor" and "Cyberlink PowerDirector") have been approved for registration on similar goods. Based on the consistency of examination standards, the registration of trademark “CyberLink AudioDirector” should not be rejected for lack of distinctiveness.
In the opinion of Beijing People's High Court, trademark distinctiveness includes the inherent distinctiveness and the acquired distinctiveness, where the inherent distinctiveness should be judged from the standpoint of relevant public. As long as the relevant public is inclined to treat a commercial symbol as a trademark to identify origin of goods when seeing it in the market, such symbol should be considered as having trademark distinctiveness. The trademark in this case is in plain English, which may have various meanings rather than one fixed meaning. It possesses certain inherent distinctiveness when used on the designated goods. In addition, "Cyberlink", as the English trade name of the applicant, had produced close relation and correspondence with the applicant after long-term use, enjoying high popularity. Under such circumstances, the relevant public is apt to associate the trademark with the applicant CyberLink when seeing it, which could play a role in distinguishing the origin of goods. Furthermore, according to the documented evidence, the applicant has registered many similar word trademarks starting with "Cyberlink", so based on the consistency of examination standards, the registration of the trademark “CyberLink AudioDirector” should also be approved. Accordingly, Beijing People's High Court revoked the first-instance judgment and the decision of TRAB, and ordered TRAB make a new decision.
[Attorney's Comment] This case reflects the reality from the side that there is significant difference between administrative authorities and judicial authorities in the applicable standards and the practical criteria in granting trademark registration. Administrative authorities are faced with huge amount of trademark application and review cases; to ensure the efficiency of work and the consistency of results, they take into consideration relatively simple factors and adopt relatively conservative standards. In comparison, the judgment of judicial authorities represents the characteristics of prudent analysis and comprehensive review on a case-by-case basis. Therefore, trademark applicants are encouraged to institute administrative lawsuits against the unfavorable results at the administrative stage to seek effective judicial remedies when there are indeed special reasons and factors to be considered.