IP Newsletter Issue 24 (2017-08-16)
 
What are the Criteria for the Distinctiveness of a Trademark?

   Recently, Beijing Higher People’s Court has made a decision under No. (2017) Jing Xing Zhong 1417 and overruled the appellant’s requests. The trademark “LITTLE SHEEP +Chinese Characters & device” under No. 3043421 is sustained to be held by Inner Mongolia Little Sheep Catering Chain Co., Ltd. is sustained.

   In the appellant’s statement of first trial for the invalidation against the aforesaid trademark, the appellant argued that the trademark in dispute is lack of distinctive and exaggerated, which would harm the socialist morals or customs and cause an adverse effect. The judge in the first trial held that the appellant did not file any evidences to prove the loss of distinctiveness because of specific reason. On the contrary, the distinctiveness for the trademark in dispute has been strengthened during the executive use over 10 years since the registration, which has been recognized as well-known trademark in 2004. Relevant pubic could identify the source of the services and the trademark in dispute should possess the distinctiveness during the invalidation.

   The appellant, dissatisfied with the judgment of the first trial, lodged an appeal to the Beijing Higher People’s Court.

   The Beijing Higher People’s Court has held that it is not necessary for a mark to meet the specified standard that it must possess a high degree of distinction. As long as it can be recognized by the relevant public as a reference to the source of goods or services, it can be used as a trademark.

   Therefore, from the case we can conclude: 1. The basic function of the trademark is to identify the source of goods. As long as there is an indication in recognition of goods/services, it is not necessary to require the significant distinctiveness for a trademark. 2. The distinctive features of the mark are derived from their own distinctiveness or the distinctiveness through actual use. The use of the trademark in dispute enhanced its distinctiveness, and it would not mislead the consumer’s confusion regarding the source of services, or cause a reduction of its distinctiveness because of a certain reason.