1. Basic Events

On July 17th 2014, Nanjing Wanya Catering Management Co., Ltd. applied for the registration of no. 14795903 “Qing You and Picture” trademark (hereinafter referred to “the opposed trademark”) on type 33 products including “fruit-containing alcohol drinks and edible alcohol”. On September 6th 2015, France Castel Group SAS (hereinafter referred to “Castel”) commissioned our firm to file an opposition application against the trademark. After strictly evaluating the case, the Trademark Office decided not to grant registration to the opposed trademark in accordance with the law. 

In [2017] Shang Biao Yi Zi no. 0000003384 Trademark Disapproval Decision, the Trademark Office holds that, although the opposed trademark and the cited trademark did not constitute similar trademarks used on similar products, the opposed trademark, applied on type 33 “edible alcohol and fruit-containing alcohol drinks”, merely expressed the taste and other characteristics of the designated products, violating article 11 paragraph 2 of the Trademark Law. Therefore, the opposed trademark would not be granted for registration.  

2. Key Approaches and Lessons

In the process of preparing and writing the opposition reasons, the client instructed us that the case should utilized article 31 of the Trademark Law, based on the prior trademark on similar products. However, after our holistic and thorough research and analysis, we suggested the client utilize the lack of distinctiveness of the opposed trademark itself and add two more reasons. One was that the opposed trademark’s text “Qing You” was used on type 33 alcohol products and was merely a direct description of the ingredient, flavor, and other characteristics of the product, lacking the feature of distinctiveness that trademarks should have and violating article 11 paragraph 1 item 2 and item 3 of the Trademark Law. The other was that the word “Qing You”, used on the designated product that was neither based on green pomelo (English translation of Qing You) nor flavored as such, would easily cause the public’s misconception on the ingredients and flavor of the product, having deceptive nature and violating article 10 paragraph 1 item 7 of the Trademark Law. The client adopted our suggestion and the Trademark Office also, eventually, accepted our contention of the opposed trademark’s lack of distinctiveness, deciding not to approve the registration of the opposed trademark. 

3. Significance

Judging from the decision of the Trademark Office, during the evaluation process, the Office also underwent strict investigation on the distinctiveness of the opposed trademark itself, besides considering the right of the prior trademark. Although the opposed trademark had already received preliminary approval announcement, due to its lack of distinctiveness, the Office still granted rejection and thereby made the justifiable decision. Therefore, in our preparation for the reasons, we should not just be limited by the demands of the clients but utilize our professional knowledge and rich work experience and proved the more professional legal advice for the clients, from a more holistic and deep perspective, striving for the most advantageous evaluation results for our clients. 
      Appendix: Pictures of the trademark

The opposed trademark

The cited trademark