Recently, the Beijing Trademark Association released the "Top 10 Typical Cases of Trademark Litigation and Top 10 Typical Cases of Trademark Non-litigation in Beijing in 2024", and the "龙集采" series of trademark invalidation administrative litigation cases represented by Sanyou were selected as one of the "Top 10 Typical Cases of Trademark Litigation in 2024"; The review of trademark rejection case of " swissbobbinet 及图" has been selected as one of the top 10 typical non-litigation cases for trademarks in 2024.

Non litigation case: review of TM rejection involving "swissbobbinet及图"

Sanyou client: SWISSTULLE AG
Hearing authority: CNIPA
Trial result: The application for trademark extension protection in China for designated use on goods of Class 24 and service of Class 40 in the review process has been approved.

Case introduction

In the case of "swissbobbinet及图", the applied trademark is designated for textiles of Class 24 and processing services of Class 40. The CNIPA believes that the trademark contains the word "SWISS", which is similar to the name of Switzerland, and cannot be registered without permission, and points out that "bobbinet" may be a descriptive term, lacking distinctiveness. On the one hand, Sanyou attorney guides the applicant to submit a notarized Swiss government consent letter, clarifying that they have obtained official authorization, thereby excluding the situations referred to in Article 10 (1) (2) of the Trademark Law;

On the other hand, from a practical perspective, a defense around the distinctiveness of the term "bobbinet" was given, citing authoritative dictionaries from Oxford and Cambridge, as well as multiple textile industry databases, to confirm that the term does not have a universal meaning in China, nor is it widely understood by the public as a product name or descriptive language, and can be used to identify the source of goods through trademark application. It has significant characteristics and does not constitute the situation referred to in Article 11 (1) (3) of the Trademark Law.

During the trial process, the Sanyou team argued with reason and accurately pointed out that the results of online translation cannot be used as a basis for claiming lack of distinctiveness, emphasizing that the evaluation should be based on official publications, industry standards, and consumer awareness. CNIPA finally recognized the evidence and legal logic submitted by Sanyou, and decided to grant extended protection of the trademark in China.

Typical significance

The victory in this case not only successfully broke through the two common rejection reasons of "similarity of country name" and "lack of distinctiveness", but also provided practical reference for the distinctiveness judgment in foreign trademark registration. The Sanyou team has demonstrated profound experience and rigorous strategies in handling complex trademark issues through a comprehensive understanding of legal provisions, authoritative materials, and trial trends.