Color combination trademarks have been filed for invalidation by many subjects due to issues of distinctiveness, which has a significant impact in the industry. Analysis and explanations of the invalidation case No. 18338886 are as follows. 

Disputed trademark：                                       

(1) Claims of the applicant

The application for registration of the disputed trademark does not conform to the formal examination requirements of the color combination trademark; the color combination of the disputed trademark is the common color of mechanical products in the industry; the color combination has not been used extensively by the respondent and plays the role of distinguishing the source of the product. Therefore, the applicant requested that the disputed trademark be declared invalid.

(2) Trial and judgment by the CNIPA

Firstly, the respondent submitted a color pattern representing the color combination way and color block in accordance with the requirements of the color combination trademark form review regulations in the Standard for Trademark Examination and Trial, and made corresponding declarations, explained the color name and color number, and described the specific use method in commercial activities. Therefore, the registration application of the disputed trademark meets the formal examination requirements of the color combination trademark. Secondly, the evidence submitted by the applicant cannot prove that the color combination has become a descriptive color for commodity of the same classification. Finally, the color combination, as a new coating for the respondent’s concrete machinery, lifting machinery, environmental industry and other products, was announced globally on April 15, 2015, and was displayed at the world anti-fascist war of the 70^th anniversary of the victory parade on September 3, 2015, which was reported by many media. The above evidence may prove that the color combination has been used and publicized extensively before the disputed trademark application date, and has formed a corresponding relationship with the respondent, which can distinguish the source of commodities. Therefore, the application for registration of the disputed trademark does not violate the provisions of Article 11, Paragraph 1, Item (3) of the Trademark Law.

Evaluation and Analysis of the Case

(1) Formal examination of color combination trademarks

In accordance with the "Examination of Color Combination Trademarks" in the Standard for Trademark Examination and Trial, the current application requirements for color combination trademarks must have three basic elements: declare in the application; submit clear color patterns and specify the color name and color number; explain the specific use of the trademark. The respondent in this case made a declaration according to the above requirements, submitted a color pattern and explained the color name and color number, and also described the specific use of the trademark. Therefore, the registration application of the color combination trademark conforms to the related formal examination requirements.

 (2) Substantive examination of color combination trademarks

This case focuses on the examination of the distinctive features of the color combination trademark. The distinctiveness issue of color combination trademarks has two levels. The basic level is the distinctiveness in the meaning of "as a trademark", which refers to whether a certain logo is a "trademark" in the cognitive habits of the relevant public. The second level is to discuss the distinctiveness of trademarks based on the basic level, that is, the identification function of distinguishing the source of goods, including inherent distinctiveness and acquired distinctiveness.

1. The identify-ability issue of color combinations as trademarks

Generally, color combinations are not easily recognized as trademarks in the cognitive habits of the relevant public. However, with the cultivation of market subjects’ habits in recent years, consumers have gradually formed the cognitive habit of regarding the use of color combinations as the source of goods or service identification marks, in addition, the color combination is designed with color difference arrangement, so it involves the identify-ability as a trademark.

2. The inherent distinctiveness issue of color combination trademarks

In the Standard for Trademark Examination and Trial, the natural color of the designated goods，the descriptive color combinations of colors commonly or usually used in the commodity itself or the packaging, and service locations are excluded from the color combination trademarks with distinctive features. The evidence submitted by the applicant in this case cannot prove that, before the application date of the disputed trademark, the color combination belonged to descriptive color of the same category of goods.

3. Considerations and specific application of obtaining distinctiveness through the use of color combination trademarks

When determining whether a color combination trademark has acquired distinctive features after use, it should be combined with the general provisions of that whether a certain mark has acquired distinctive features after use in the Standard for Trademark Examination and Trial, take issues including the color combination trademark itself, related public perception habits, the service condition and practice in the industry, the service condition and promotion of color combination trademarks into consideration,  regard that determining whether the disputed trademark is stably connected with the applicant, and whether it has the function of distinguishing the source of goods or services as standards. The three considerations have been analyzed in the above-mentioned issues of trademark identify-ability and inherent distinctiveness, so the following analysis is mainly from the perspective of the service and propaganda of color combination trademarks.

The report information the exhibition pictures and contracts of the global launch of new coatings in Changsha and Milan, the data of the world anti-fascist war of the 70^th anniversary of the victory parade, and the participation materials after the approval for registration of the disputed trademark submitted by the respondent in this case, may respectively prove the color combination trademark’s universality of the use and publicity, broad scope of the audiences, the intensity of publicity, and continuous use situation. Based on which, it is sufficient to judge that before the application date of the disputed trademark, in the cognition of the related public, the color combination trademark has been already stably and correspondently collected with the respondent that can refer to each other, and has provided with the function of distinguishing the source of goods and is enable to play that role, and the use of it has further strengthened its distinctiveness. Therefore, the administration made the judgment of maintaining the registration of the color combination trademark.

From CNIPA

July 20th, 2021