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INSIGHTS CASE
Sanyou won the Administrative Dispute on Trademark Rejection Review in representing NUTRITS LTD.

Sanyou Client: NUTRITS LTD.

Sanyou Attorneys: Miao Hu/Hanmei Wang

Trial Organs: Beijing Intellectual Property Court, Beijing Higher People’s Court

Trial Result: It was determined that the disputed trademark image.pngdid not violate the provisions of paragraph 1 (7), Article 10 of the Trademark Law. The appeal request of CNIPA was rejected, and the first-instance judgment was upheld. 


Case Facts

The disputed trademarkimage.pngis a very cute baby care product brand created by Nutrits, which has a high market reputation and popularity in the maternal and infant industry. Nutrits applied for registration of the disputed trademark on “rocking horses; play rings; toy balloons; doll feeding bottles; toy strollers" and other goods of Class 28. CNIPA believed that "NANO" in the disputed trademark can be translated as "nanotechnology", and when used on designated goods, it is easy for consumers to misunderstand the characteristics of the production process and other characteristics of the goods. CNIPA thus decided that the disputed trademark constituted the situation as provided in paragraph 1 (7), Article 10 of the Trademark Law and rejected the registration application. 


Nutrits refused to accept the decision and filed a lawsuit with Beijing Intellectual Property Court. After hearing, Beijing Intellectual Property Court held that the trademark in dispute was composed of the English letters "nanobebe", and combined with the general cognition level and cognitive habits of the relevant Chinese public, it is not appropriate to understand "nanobebe" as related to nanotechnology as determined by the sued decision when making an overall judgment on the trademark in dispute. The court deemed that the use of the trademark in dispute on goods such as "rocking horses; game rings; toy balloons; doll feeding bottles; and toy strollers” would not cause misunderstanding of characteristics of the goods, therefore the disputed trademark did not violate the provisions of paragraph 1 (7), Article 10 of the Trademark Law, and revoked the sued decision.


CNIPA refused to accept the first-instance judgment and appealed to Beijing Higher People’s Court. After the trial, the court of second instance held that the disputed trademark did not violate the provisions of paragraph 1 (7), Article 10 of the Trademark Law, and thus rejected the appeal request of CNIPA and upheld the first-instance judgment.


Typical Significance

This case involves the application of the “deceptive” absolute grounds clause in the Trademark Law. At present, there are no legal provisions for determining the deceptiveness of a trademark. The provisions are very flexible in judicial practice, and even the phenomenon of different judgments was given in the same case occurred. 


For such cases, when judging whether a mark applied for TM registration is one that cannot be used as a trademark as stipulated in this clause, it shall be defined according to the general public perception, combined with the goods or services designated for use. And overall judgment shall be made to whether the meaning conveyed by the mark is inconsistent with or obviously inconsistent with the source, quality and other characteristics of the designated goods or services, or the place of origin, which may easily cause misunderstanding of relevant public on the characteristics of the goods or services. 


In particular, the cognition of the meaning of a mark in foreign language should be combined with the general cognition level of the Chinese public, and an overall judgment shall be made on the mark as a whole, rather than dividing it into letter groups before defining it. The form of interpretation runs counter general cognitive habits of the public.


This case was selected by Beijing Trademark Association as one of the Top 10 Typical Trademark Litigation Cases in 2021, which is of reference significance for similar cases in judging whether foreign language trademarks are deceptive.