Are Elements of a Registered Trademark Independently Protectable? – The possibility of protecting a word or phrase in a trademark independently under the trademark law
(Author: Chen Binyin; Source: DeBund Law Offices)
A client of mine (“Company B”) was recently involved in a trademark litigation case with another company (“Company A”). This case arose from the use of two Chinese characters that had been used by Company A as a part of its registered trademark while Company B, a direct competitor against Company A, also use these two characters for its trademark.
Company A finally rescinded this case after it felt unable to disagree with Company B’s arguments that the two trademarks in dispute are “not mistakable”, the “words and phrases consisting of the Company B’s trademark have distinctive characteristics” and so has the “the Company B’s trademark as a whole”. Although this case was closed, I am still thinking an issue that whether words or phrases in a trademark are really protectable independently by the trademark law. In the following passages, I will introduce this issue briefly.
Key issues in the above case
Company A, based in Chongqing and Company B, based in Shanghai are both manufacturers of rubber joints. In 2008, Company A registered a trademark under Class 17A, comprised of three circles connecting to each other which looked like the Chinese character “品”. The top circle contained “CQ”, the abbreviated form of Chongqing, a Chinese city, with the left one contained the Chinese character “松” and the right one contained the Chinese character “江”. By 2012, Company B registered a trademark under Class 6B, an artistic design which looked like a combined form of “GY” and showed the business mark of Company B in its bottom part. In practice, Company B would affix a label identifying the company name on one side of the above trademark and a label identifying the place of origin of the products, i.e. “松江” on the other side.
Company A claimed that the act of using “松江” by Company B on its trademark constituted an infringement of its trademark rights. Except the similarity between the products and the similarity between the types of the trademarks in dispute, the key issue raised in this case was whether Company B’s use of “松江” with its trademark was an infringement of Company A’s exclusive right to its registered trademark.
The main arguments we claimed on behalf of Company B are as follows.
1. The graphic design of Company A’s trademark is distinctly different from that of Company B’s；
2. Company B’s use of the Chinese words “松江”, the name of a district in Shanghai with its trademark, together with labels showing the manufacturer’s name and address on the same page, is to identify the manufacturer’s location and the source of the products, and therefore should be deemed as reasonable;
3. As the first domestic manufacturer of the products in dispute was based in “松江”, such products are also known as Songjiang (the phoneticize of 松江) rubber joints;
4. The products in dispute are not consumer goods for the mass market and will not be mistaken by the general public in the industry participants;
5. “松江” has no distinctive characteristic when being used with trademarks, and is therefore not independently protectable by the trademark law.
During the proceedings, Company A insisted on its claims and filed a new lawsuit with another court, Chongqing No.5 Intermediate Court, but was dismissed for nearly the same reasons as what we claimed in the first case above mentioned. As a result Company A rescinded the case.
Circumstances in which elements of a trademark is independently protectable by the trademark law
The most important factor that a court would take into account when deciding on a trademark infringement case is “whether the trademarks in dispute are mistakable”. As defined by the Trademark Office and the Trademark Review Commission in the Trademark Review Rules, two trademarks that “may be easily mistaken by the relevant public when being used for commodities or services to show their places of origin” shall be deemed as mistakable. Whether one or more words in a trademark independently protectable under the trademark law mainly depends on the role such words play in causing the trademarks in dispute to be mistakable.
According to the Trademark Review Rules, there are three circumstances in which words or phrases in two or more trademarks may be deemed as similar, including a. identical or similar Chinese characters, b. identical or similar words or phrases in a foreign language, letters or figures, or c. words or phrases written in different languages but expressing or basically expressing the same meaning.
The Trademark Review Rules further set out sixteen (16) circumstances for comparing words and phrases used for or with different trademarks. If you want to learn more about these circumstances, you could read the Trademark Review Rules. In the paragraph below, I would introduce the key points in the provisions relating to the above sixteen circumstances.
1. The distinctiveness of a word or phrase in a trademark can be used by the trademark owner as a basis for claiming rights to such a word or phrase independently under the trademark law.
2. The trademark distinctiveness includes “inherent distinctiveness”, for example, “ASUS”, “Dell”, “adidas”, “nike”; and “acquired distinctiveness”, for example, “American Standard”, “zanthoxylum nitidum”, “rich man”, “boss”, etc.
3. The higher degree the distinctiveness of a word or phrase in a trademark is, the greater exclusivity the trademark holder may claim and the more likely the trademark holder can exclude others from using or using a modified form of such a word or phrase to design a new trademark.
However, please note that neither “inherent distinctiveness” nor “acquired distinctiveness” can be used as a good reason for not allowing a person to use a word or phrase in a way that is usual and appropriate, for example, using it to describe the usage of products (such as “specially provided for ASUS”), a feature or characteristic (such as to say “containing zanthoxylum nitidum”), quality standards (such as “American Standard”), or places of origin (such as “Songjiang”).
Therefore, not every word or phrase in a trademark is independently protectable by the trademark law. If any use of “Qingdao”, “Beer”, “Guizhou”, “Moutai”, “Jinhua” or “ham” (among which “Qingdao”, “Guizhou” and “Jinhua” are names of places in China) as part of a trademark could be found as an infringement of such registered trademarks as “Qingdao Beer”, “Guizhou Moutai” (Moutai, a famous Chinese alcoholic drink), “Jinhua Ham”, the trademark administration order and the business operation would be adversely affected. In my opinion, judicial authorities should treat each case with extreme cautionn filed by someone to claim rights to partial elements of a registered trademark rather than a trademark as a whole. When dealing with a particular case, make sure the case is filed in good faith to prevent willful or arbitrary division or combination of elements of a trademark with the intention to defeat opponents.