Recently, lawyer Zhang Hong and lawyer Li Shuhua of Beijing Janlea Law Firm represented a domestic client in the “Repostable” trademark dispute administrative litigation case and won in the second-instance trial.

On June 1st 2010, 3M Company filed an administrative litigation on the “Repostable and Picture (designated color)” trademark. The company contended that “Repostable” and its “Post It and Picture” were similar, and the use of “Repostable” on laptops had no distinctiveness. Also, if the registration of “Repostable” was to be maintained, other businesses would be lawfully using “Repostable” on “notepads”, committing infringement.

After the case was trialed at Beijing No. 1 Intermediate People’s Court, the Court ruled that the contention of 3M Company did not stand. 3M Company appealed to Beijing Higher People’s Court, who specifically adopted the wording we used in the first-instance trial, which was that if “Repostable” directly communicated the functional features of products including “notepads”, its application on the mentioned products would be an appropriate use and would not involve infringement on trademark rights. But the distinctiveness of “Repostable” on “notebooks” and related products should be recognized. 

This case enlightened us on whether or not a trademark will cause obstacle for the normal application by other businesses, if it communicates the characteristics of a product but is registered on another product without such characteristics. According to the regulation of Trademark Law, if the registered trademark includes the common name, figure, model name of the product, or directly communicates the quality, main components, functions, uses, weight, number or other characteristics, the owner of the registered trademark has no right to prevent the normal application of others. Therefore, the second-instance court held that, other companies’ application of the descriptive symbol on the associated common products had the lawful counterargument right according to regulation, but the distinctiveness of this trademark on other types of products should still be protected.

After the success of this case, the domestic client posted a specific news report to introduce it and showed gratitude for the commission completed by our firm.

Please refer to the following webpage: http://www.shangwunotes.com/news.htm