Each and every practitioner should familiar that, as per Article 10-1-7 of China Trademark Law, “Any mark which is deceptive and which is likely to cause the public to misunderstand the quality or other characteristics of the goods or the place of origin shall not be used as a trademark. The mark has been refused by the administrative authority based on the clause mentioned above, the mark belongs to ones which are banned or prohibited to the registration, the consequence could not be worse. However, in the course of actual review, the appearance of such clause is quite low, because the “mis-recognition” in this clause has many dimensions, the “mis-recognition” may target against the using main body of the trademark, or against the place of origin as well as the quality of the goods. China National Intellectual Property Administration may not clarify such kind of “mis-recognition” will involve in which dimensions in the review documents, as a result, in the course of handling the case, the attorney’s capacity on judging the “mis-recognition” on which dimension will be a key factor, and the writer would like to share experience via the case below, 

We acted for MCCORMICK & COMPANY, INCORPORATED，the case regarding the decision on the request of invalidation declaration on the trademark “McCORMICK and device” with No. 14457946 under ref. Bu Fu Shang Ping Zi (2018), China National Intellectual Property Administration held that, the mark “MC” has been used on wine and other wine goods, which have strong relevance with Whisky, “MC” will be easier to recognize to have relevance with “Scotland”, wine and other wine goods with such mark are easier to be recognized by the public that it came from Scotland, or the quality of the goods has special connection to Scotland’s geographic or cultural factors, furthermore, to be featured by special Scotland Whisky. “mc” is a large proportion in the disputed trademark, furthermore, “Mc” serves as one of significant parts in the trademark “McCORMICK”, the composition method is feature with the mark of Scotland Whisky, used on wine and similar goods, are easier to mislead the public to hold there is relevancy between the goods and Scotland, will mislead the public to think the goods are come from Scotland, or have special quality related to the Scotland geographic and cultural factors, as a result, the disputed trademark has constituted the situation clarified by Article 10-1-7 in Chinese Trademark Law. 

From this, it is not difficult to see that, China National Intellectual Property Administration has already made clear on the dimension of “mis-recognition”, as well as the “mis-recognition” on place of origin and quality from the place of origin, and then, in the course of reviewing the case, the attorney can shoot the arrow at the target, can collect effective pieces of evidence for the rebuttal. In the course of the review, the attorney has provided evidence in 2 fields, first of all, the evidence regarding the trade name of plaintiff “迈考美有限公司”and the trademark “McCORMICK” enjoy high reputation, which can prove the disputed trademark targets the plaintiff instead of “Scotland”, Secondly, from the search results from the National Library and dictionaries, can prove vocabularies star from “MC” are not completely related to “Scotland”. The purpose of these two pieces of evidence aim to overthrow the judgement of China National Intellectual Property Administration, that is “MC” can pint to “Scotland”. Finally, in the first instance, Beijing Intellectual Property Court held that, “MAC”, “MC” can be proved via the third party’s documented evidence, such kind of letter combinations are partial prefix of Scottish surnames, furthermore, such kind of letter combinations are used on partial Whisky brands, however, this is not enough to prove that Chinese public has already extensively established stable and close relationship between the letter combinations of “MAC”, “MC” and the place of origin of Whisky. 

In consideration that, the disputed trademark does not include the vocabulary which can directly describe the place of origin, furthermore, the approved goods are not include Whisky, the disputed trademark is designed on wine, as per the public ‘s common sense and whole judgment, they will not misunderstand the relevant place of origin and then to affect the consumption. As a result, the application for the registration of the disputed trademark did not violate Article 10-1-7 of Chinese Trademark Law. After China National Intellectual Property Administration and the Third Party filed lawsuit against the first instance, Beijing Intellectual Property Court has dismissed the appeal with the administrative written judgement with ref (2020) Jing Xing Zhong 445, and upheld the verdict. 

Therefore, in the course of handling the case involved with Article 10-1-7 of Chinese Trademark Law, the attorney should, firstly, judge the “mis-recognize” belongs to which dimension, and then, make right remedy, collect corresponding evidence for weakening as much as possible the factual basis of such kind “mis-recognize”, even to totally overthrew it, and then, strive for the most favorable judgement for the client. 

Ms. LI Shuhua, the attorney of Beijing Janlea Law Firm and her legal service team offeredMCCORMICK & COMPANY, INCORPORATED legal service for the case’s actions for the first and second instance.