As per Article 10-1-(7) of Chinese Trademark Law, marks, which have fraudulent nature and easily cause the misidentification on goods’ quality, characters or origin of place among the public, are not allowed to use as the trademark. I believe all agents are familiar with this regulation. The marks rejected by the administrative body based on this absolute clause pertains to the marks of “prohibited to register and use”, the consequence is quite serious. However, in the actual examination of the trademark, the appearance rate of the article is quite high, the reason is that the “misleading” referred to in this article has multiple dimensions, including possible misidentifications on the main body of using the trademark, on the origin of place or the possible misidentification on quality of the goods. The application of this provision by China National Intellectual Property Administration does not necessarily specify in the review document the specific dimensions to which the misidentification may arise. Thus, when we deal with such kind of cases, whether the agent can identify which dimension has involved in the “misidentification” will be an important factor. The writer will share relevant piece of experience through a case. 

Janlea acted as an agent for McCombe Co., Ltd. in the case of refusing to accept the verdict under No. Shang Pin Zi (2018) No. 6197, which requested to declare the invalidation against the trademark “McCORMICK and device” under trademark No. 14457946, China National Intellectual Property Administration held that, usage on wine goods that have strong relevance with Whisky, the word “MC” can be easily be thought to be related to “Scotland”, goods labelled with the logo, i.e. wine, tend to be perceived by the public as originating in Scotland, or its quality has some special connection to the geographical factors and human factors of the area of Scotland, with the traditional characteristics of the Scotch whisky. “mc” occupies a large proportion of the disputed trademark, also, as one of distinctive parts of “McCORMICK”, it begins with “Mc”, it has the characteristics of the trademark of Scotch whisky in terms of composition, and when it has been used on similar goods, i.e. wine, it is easy for the public to associate the goods with Scotland, to mistakenly think that the goods is produced in Scotland, or has specific qualities related to Scottish geographical or humand factors. Thus, the disputed trademark has constituted status stipulated by Article 10-1-7 of Chinese Trademark Law. 

From this, it is not hard to see that, the dimension of “misidentification” easily posed by the disputed trademark, which is determined by China National Intellectual Property Administration, lies in the “misidentification” of the origin of place and the quality based on the origin. Knowing this, we can have a definite aim in the process of acting case, pieces of effective evidence can be collected to refute the identification. In the process of the case, the agent has filed pieces of evidence in terms of two aspects, first of all, the evidence, which prove the trade name of the plaintiff, “McCombe Co., Ltd.”, and the trademark “McCORMICK” enjoy higher reputation, can be used to prove the disputed trademark in the public targets to the plaintiff rather than “Scotland”, secondly, as per the search report of the national library and pages in the dictionary can be used to prove vocabularies starting with “MC” are not completely related to “Scotland”, the purpose of these two angles of proof is to overturn the assertion that the prefix “MC” can point to “Scotland” in the ruling of China National Intellectual Property Administration. Finally, in the first instance judgement, Beijing Intellectual Property Court held that, although the evidence filed by the third party can prove that the letter combination “MAC” “MC” is partial of prefix of the Scottish surname, also, such kind of letter combination has been used in some whisky brands, it is insufficient to prove the Chinese public has widely established a stable and close relationship between the letter combination prefix of “MAC” “MC” and the origin of whisky. Considering that the disputed trademark itself does not have a vocabulary that directly describes the origin of place, and its’ designated goods do not include whisky, the disputed trademark is used on the wine and other approved goods, customers are not likely to have any doubts, based on the usual cognition and overall judgement, on the origin of place of the goods, furthermore, not affect the consumption behaviors. As a result, the application for the registration of the disputed trademark does not violate the Article 10-1-7 of Chinese Trademark Law. After China National Intellectual Property Administration and the third party filed an appeal against the first instance judgement, Beijing City High People’s Court rejected the appeal in (2020) Jing Xing Zhong No. 445 Administrative Judgement and affirmed the original judgement. 

Therefore, in the process to deal with the case involved Article 10-1-7 of Chinese Trademark Law, firstly, the agent shall figure out the dimension of “misidentification” that the trademark administrative institution considers when they applying the law, and then, to act appropriately to the situation, to collect relevant pieces of evidence to weaken the factual basis of the “misidentification” as much as possible, or even completely overthrow such claim, furthermore, to strive for a favorable result for the client.

Janlea legal service team under the lead of the attorney Mrs. LI Shuhua to provide McCombe Co., Ltd. with the whole legal service in the process of the first and second instance lawsuit.