The disputed trademark consists of the English words "PI", "Advanced Materials", and figures. The English part has the meaning of "polyimide", "advanced materials or new materials", and is designated for use in goods such as category 22 "textile carbon fibers". It does not necessarily use polyimide in the field of new materials. The public may easily misunderstand the composition, quality, and other characteristics of products such as category 22 "textile carbon fibers", and mislead consumers.

Brief Introduction to the Case

The plaintiff Polyimide Advanced Materials Co., Ltd. is the holder of the trademark "PI Advanced Materials and Figures (Designated Colors)" (referred to as the disputed trademark) with international registration number 1563666. The defendant, the China National Intellectual Property Administration, made the respondent's decision to reject the application for territorial extension protection in China of the sued trademark designated for use on all goods of Category 22, such as carbon fiber for textile purposes (hereinafter referred to as the sued goods), on the ground that the territorial extension protection in China of the sued trademark designated for use constitutes Item 7 of Paragraph 1 of Article 10 of the Trademark Law of the People's Republic of China (hereinafter referred to as the Trademark Law).

Disputed trademark

The plaintiffs have waived their exclusive rights to "PI" and "Advanced Materials" respectively, and have submitted an application to the International Bureau to limit all designated goods to "all of the aforementioned goods are related to polyimide".

The plaintiff believes that the disputed trademark after restricting the goods will not have a misleading effect on the raw materials and characteristics of the goods. The significant recognition of the disputed trademark is mainly reflected in the overall and graphic parts of the trademark. After the plaintiff's long-term and extensive use and promotion of the disputed trademark, the relevant public has established a strong and close connection between the goods provided by the plaintiff and the disputed trademark, The territorial extension protection application for the disputed trademark does not violate the provisions of Article 10, Paragraph 1 (7) of the Trademark Law, and the lawsuit requests the revocation of the sued decision.

Investigation and handling

The Beijing Intellectual Property Court, after hearing the case, made a judgment and found that the defendant's conclusion of the China National Intellectual Property Administration that the disputed trademark violated the provisions of Paragraph 7, Paragraph 1, Article 10 of the Trademark Law was correct and should be maintained. The judgment rejected the plaintiff's lawsuit request from Polyimide Advanced Materials Co., Ltd.

Legal analysis

After trial, the Beijing Intellectual Property Court found that the focus of the dispute in this case is whether the designated use of the disputed trademark on the disputed goods in China's territorial extension protection violates the provisions of Article 10, Paragraph 1 (7) of the Trademark Law.

According to the provisions of Article 10, Paragraph 1, Item 7 of the Trademark Law, any mark that is deceptive and may cause the public to misunderstand the quality or origin of the goods shall not be used as a trademark. The so-called fraudulence refers to the situation where a trademark makes representations beyond its inherent level or inconsistent with the facts regarding the quality or origin of the goods or services designated for use. Starting from the general level of cognition and cognitive ability, based on the understanding of the trademark, the public may misunderstand the true content, function, quality, and other characteristics or origin of the goods or services.

In this case, the plaintiff claims that the goods designated for use in the disputed trademark have been limited to "all of the above goods are related to polyimide (PI) in the field of new materials". This limitation is a specific limitation made by the plaintiff on the 22nd category of related goods, which comes from its English trademark application submitted in the basic application country. The plaintiff did not submit evidence to prove that the above restrictions had a substantial impact on the category of goods designated for use in the disputed trademark.

The China National Intellectual Property Administration shall, in accordance with the Trademark Law and relevant provisions, examine the international registration in China, and preliminarily examine and publish the application for registration that conforms to the provisions or that uses trademarks on some designated goods. The disputed trademark consists of the English words "PI", "Advanced Materials", and figures. The English part has the meaning of "polyimide", "advanced materials or new materials", and is designated for use in Class 22 "textile carbon fibers" and other goods. It does not necessarily use polyimide in the field of new materials. The public, based on their usual cognitive abilities and daily life experience, It is easy to associate the aforementioned description of product characteristics with the attributes of the designated use of the product itself, which can lead to misunderstandings about the composition, quality, and other characteristics of products such as category 22 "textile carbon fibers" and mislead consumers.

Although the plaintiff claims to have waived the trademark exclusive rights application for the disputed trademark "PI" and "Advanced Materials" in both Chinese and English, the relevant public is not naturally aware of the waiver of the exclusive rights of the disputed trademark, and will still identify the English "PI" and "Advanced Materials" as the constituent elements and prominent parts of the trademark.

Article 10, Paragraph 1, Item 7 of the Trademark Law is an absolute reason for the prohibition of trademark registration. Marks that violate the provisions of this provision shall not be used as trademarks. When the mark itself has the defects mentioned in Article 10, Paragraph 1, Item 7 of the Trademark Law, it cannot be overcome by adding other elements and subsequent use behavior. The plaintiff's claim that the graphic part of the disputed trademark has recognition and high popularity after use does not affect the judgment of whether the disputed trademark in this case violates Article 10, Paragraph 1, Item 7 of the Trademark Law.

Therefore, the defendant's conclusion that the disputed trademark violates the provisions of Article 10, Paragraph 1, Paragraph 7 of the Trademark Law is correct and upheld by the court.

Judge's reminder

Article 10, Paragraph 1 (7) of the Trademark Law stipulates that deceptive marks shall not be used as trademarks, and this article is also an absolute reason for the prohibition of trademark registration. There are two key points to the identification of deceptive signs: firstly, they are prone to misunderstandings, and secondly, they are based on the general level and cognitive ability of the public.

Misunderstanding generally refers to the misunderstanding of the attributes of a commodity or service itself, such as its quality, origin, raw materials, content, type, function, purpose, model, weight, quantity, price, production time, technical characteristics, etc. To determine whether there is a risk of misidentification, one should consider the consistency of attributes between the logo and the goods or services it is approved to use, that is, whether the logo or its constituent elements express or imply attributes that the goods or services do not originally possess.

In this case, the English parts of the disputed trademark "PI" and "Advanced Materials" have the meanings of "polyimide" and "advanced materials or new materials". However, the goods approved for use in the disputed trademark are not limited to polyimide and do not necessarily belong to new materials. Therefore, it is easy for consumers to misunderstand the composition and quality characteristics of the goods.

Article 48 of the Implementation Regulations of the Trademark Law of the People's Republic of China stipulates: "If an application for the extension of China's territory is made for deletion, and the deleted goods or services do not meet the classification requirements of China's relevant goods or services or exceed the scope of the originally designated goods or services, the Trademark Office shall make a decision that the deletion is invalid in China and make a declaration to the International Bureau

The category of goods and services approved for use by the trademark registration applicant shall fill in the application according to the prescribed commodity classification table, and the use finally approved by the China National Intellectual Property Administration shall prevail. The party's commitment to the use of goods or services or self restriction is not considered. For an application for territorial extension of China designated by an internationally registered trademark, the deletion of goods or services shall also pass the examination of the China National Intellectual Property Administration.

The second key point in identifying deceptive signs is to start from the general cognitive level and cognitive ability of the public, that is, the subject of misunderstanding should be the public. If a sign or its constituent elements, although exaggerated, are not misleading based on daily life experience or general public perception, it should not be considered deceptive. On the contrary, if the logo itself is easily mistaken by the public, the conclusion that the logo is deceptive cannot be reversed in a way that is difficult for the public to know.

In this case, the plaintiff claims that they have waived the trademark exclusive rights application for the disputed trademark "PI" and "Advanced Materials" in both Chinese and English. However, the relevant public is not naturally aware of the waiver of the exclusive rights of the disputed trademark, and will still identify the English "PI" and "Advanced Materials" as the constituent elements and prominent parts of the commercial trademark. Therefore, the plaintiff's waiver of the English part of the disputed trademark does not affect the determination of fraudulent marks.

Article 10, Paragraph 1, Item 7 of the Trademark Law is an absolute reason for prohibiting the registration of trademarks. When applying for the registration of trademark marks, the boundaries should be clearly defined. It is hoped that the majority of operators can consciously abide by relevant laws, follow the principle of honesty and credit, and business ethics, so that more symbols with beautiful meanings and not violating public interests can promote the vigorous development of the market.

Source: Zhichan Beijing