According to Joerg Wuttke, Chairman of EU Chamber of Commerce in China, although the economic growth of China is slowing down sustainably, China is still the preferred investment destination for EU enterprises. As China enters the era of normal economic development, innovation will become one of the key factors to promote the improvement of China's economy value chain. He also thinks high of the recent introduction of “Made in China 2025” by the Chinese Government. While in his opinion, the government should also focus on the market demand and strengthen the support to technical transfer while increasing the R&D investment, and help create the legal paradigm for R&D investment productization with effective legal protection. All of these requires further development of financial system, increased enforcement of intellectual property law and regulations, as well as nurturing a business environment of fair competition for innovative enterprises to grow.

As widely known, EU Chamber of Commerce in China, established in 2000, is an independent non-profit organization. It now has about 1,800 enterprise members, and has established 7 branches in nine cities including Beijing, Shanghai, Guangzhou, Shenzhen and Chongqing. (Source: China Intellectual Property News)

This journal has the following comments on Unitalen: The trusted ally of premier-league domestic corporates such as Hefei Smarter Group and Magna International, Unitalen consistently maintains a place at the top of the filing statistics. In a recent highlight, Alibaba Group instructed it on a complex patent invalidation hearing, which resulted in a notable success. The string of victories it has notched up in high-profile patent infringement battles bears testament to its contentious muscle. Vice president Deshan Li leads by example; his blend of electrical engineering knowledge and legal sagacity proves a potent combination.

"2015 IAM Global Top 1000 Patents" were based on the interview with over 1,500 attorneys, patent agents and corporate legal counsels in over 40 countries. This investigation lasted 5 months, and involved patent application, patient licensing, patent commercialization and patent lawsuit. This analysis data has authoritative reference significance for the patent practitioners in global jurisdictions.

ALSTOM has applied for international registration of trademarks No. 1147882 "Designing fluidity" (English) and No. 1147880 "Concevior la fluidite" (French), and requested extension of territorial protection with China Trademark Office. China Trademark Office (CTMO) as well as Trademark Review and Adjudication Board (TRAB) both believed that the trademarks at dispute were composed of common advertising expressions and descriptive words that would not be recognized by consumers as trademarks and distinguish the origin of goods or services. They were refused for protection due to lack of distinctiveness. Dissatisfied with the decisions, ALSTOM further entrusted Unitalen to institute administrative lawsuits against TRAB at Beijing Intellectual Property Court with respect to the trademarks at dispute.

Based on professional practice in trademark application and profound understanding of administrative lawsuit proceedings, Unitalen's team of attorneys and agents put forward the following grounds at the lawsuit stage:

1. Judgment on distinctiveness of trademarks in foreign language should take into account of both the objective meaning and the cognitive ability of relevant public;

2. Objective meaning of trademarks was not directly descriptive with respect to the designated goods and services, and the trademarks are not devoid of distinctiveness;

3. There is no evidence to support TRAB’s conclusion that the disputed trademarks had become advertising expressions, and;

4. The disputed trademarks had been approved for registration in other English- and French-speaking countries, sufficient to support that the trademarks were distinctive enough for registration.

After hearing, Beijing Intellectual Property Court has accepted Unitalen’s grounds and expressed their opinions as follow:

- The disputed trademarks are not devoid of distinctiveness with respect to the designated goods and services (relative distinctiveness), and are not devoid of distinctiveness with respect to any goods and services (absolute distinctiveness).

- As far as relative distinctiveness is concerned, the Court analyzed from the legislative intent in Article 11 of Trademark Act that the distinctiveness, on one hand, requires that a trademark has the identification effect for consumers to distinguish the origins of goods and services, and on the other hand, should avoid affecting the fair use of descriptive marks by the businesses of the same industry. For the trademark in French language for which the consumers do not have the cognitive ability, if the businesses of the same industry do not use the mark to describe the designated goods and services in the daily operating activities, it is improper to judge the distinctiveness only based on the objective meaning of trademark. Even if the objective meaning of a trademark in English or French is taken into account, the trademark is not directly descriptive with respect to the designated goods and services. Therefore, the disputed trademarks were distinctive with respect to the designated goods and services.

- With respect to the issue of absolute distinctiveness, the Court expressively pointed out that in general it should be taken into account whether the visual expression of the mark is in conformance with the general cognition of a trademark by relevant public. If not, the trademark is not distinctive with respect to any commodity or service, e.g. advertising expression, because relevant public generally will not identify an advertising expression as a trademark. The appearance expression of the disputed trademarks is in conformance with the general cognition of relevant public for a word trademark, and is not in conformance with the general cognition of relevant public for an advertising expression. Therefore, it is improper for TRAB to decide that the disputed trademarks were not distinctive.

Accordingly, Beijing Intellectual Property Court judged that the decisions made by TRAB should be fully revoked and shall be re-made.

[Attorney's comment] This series of administrative lawsuits has included in-depth analysis of and reasoning on the judgment of distinctiveness of trademarks in foreign languages. In particular it explicitly indicates that “a trademark has objective meaning ≠ it lacks distinctiveness", which has provided guiding significance to the application of Article 11(1)(iii) of Trademark Law.

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.

In this case, Unitalen attorneys successfully argued that although the goods of the opposed trademark and those of the cited mark do not belong to the same sub-group, they are both daily household appliances for mass consumers, with strong relevance in function, use, sales channel and target consumer, so they should be considered as similar goods. Both TRAB and Beijing No. 1 Intermediate People's Court supported the above arguments.

[Attorney's Comments] In judging the similarity of goods, the “Guide for distinguishing similar goods and services” published by the Trademark Office shall be the primary but not the sole standard. According to the Interpretations of Supreme People's Court on the Several Issues of Applicable Laws for Hearing of Civil Cases Concerning Disputes over Trademark, whether the function, use, production, sales channel and target consumer of goods are identical or significantly relevant shall also be taken into account to decide whether the goods are similar or substantively correlated that is apt to cause confusion. Therefore, attorneys shall exercise prudent judgment of each particular case, and take full account of the related factors, so as assist the trademark owners to protect their rights and interests actively.