(By Luo Yanjie)Abstract: Pursuant to Chinese Trademark Law, those applications having unhealthy influences shall not be used as trademarks. “Unhealthy influences” refers to a negative, or inactive influence that may detrimental to the interests and social order of the public, including political, economic, cultural, religious and ethnic allusions which are a registered trademark itself or a mark that is applied to goods or services. However, the Chinese Trademark Office should have a consistent attitude regarding the trademark adjudication standard for these unhealthy influences.
In practice, when applying for trademarks, applicants are almost always refused for reasons that they cannot imagine. For example, trademarks with some religious meanings may be a common ground for rejection. However, many applicants do not even know that their trademarks have religious meanings. In today’s post, we would like to introduce a similar case for the following.
Introduction to the Case:
Plaintiff: APTALIS PHARMA LIMITED (the “APTALIS”)
Defendant: Trademark Review and Adjudication Board (the “TRAB”)
Court of first instance: Beijing No.1 Intermediate People’s Court No.: (2012)一中知行初字第2644号
Court of second instance: Beijing Higher People’s Court No.: (2012)高行终字第1671号
APTALIS filed an application for ZENPEP trademark (the “disputed trademark”) numbered 7398539 on May 15, 2009 under Class 5 for pharmaceutical pancreatic enzyme preparations. In May 2010, the Chinese Trademark Office (the “CTMO”) refused its application, on the ground that the disputed trademark, for human-purpose’ medicines, included the word “ZEN” within the Buddhist religious meaning and thus constituted an unhealthy influence. Then, APTALIS applied, but both the TRAB and Beijing No.1 Intermediate People’s Court refused its application on the same grounds. Dissatisfied with the rejection, APTALIS appealed to the Beijing Higher People’s Court.
Beijing Higher People’s Court heard the case and decided that
- The disputed trademark is comprised of “ZENPEP” in all capitals, without any separator. “ZENPEP” is not an English word with a concrete meaning or defined usage. When relevant Chinese consumers see the disputed trademark, they won’t deliberately disassemble the disputed trademark into two words, i.e., ZEN and PEP, and thus are unlikely to be lead into thinking that ZEN has a religious meaning.
- There are many registered trademarks beginning with “ZEN”, such as “ZENTASE”, “ZENNAPAX” and “ZENVIQUE”. In accordance with consistency principle of the trademark adjudication standard, the disputed trademark should not be considered an unhealthy influence.
Therefore, Beijing Higher People’s Court changed the judgment handed down by the court of first instance and repealed the ruling contained by TRAB in ordering the TRAB to remake a ruling.
Lawyers’ Comment:
1. The understanding that those applications having unhealthy influences shall not be used as trademarks as regulated in the Trademark Law.
Pursuant to Item 8, Paragraph 1 of Article 10 in the Trademark Law, those applications having unhealthy influences shall not be used as trademarks. “Unhealthy influences” refers to a negative, or inactive influence that may detrimental to the interests and social order of the public, including political, economic, cultural, religious and ethnic allusions which are a registered trademark itself or a mark applied to a goods or services.
In this case, the CTMO held that the “ZEN” had religious meaning and thus refused the application. However, in accordance with the understanding of consumer behavior when interacting with foreign trademarks, consumers won’t disassemble the disputed trademark into two parts, i.e., “ZEN” and “PEP”. Therefore, the TRAB mechanically applied this Article with the erroneous logic that the disputed trademark could be disassembled into two words, ruling that this would be considered as having a religious meaning, rejecting the application. It is difficult to support the reasoning of the TRAB. As such, it is the right judgment to change the original ruling.
2. The CTMO shall have a consistent attitude toward the trademark adjudication standard.
In practice, applicants always undertake legal research in advance about the trademark application through professional service institutions, in order to analyze the success rate of trademarks. As for the analyses of the search results, the Trademark Adjudication Standard would, in theory, be a legal reference point. However, there is a huge gap between theory and practice. Take the Trademark Adjudication Standard; “AB” trademark constitutes similarity with the “ABC” trademark. However, in practice, those two trademarks would co-exist. Therefore, if the Trademark Adjudication Standard is applied mechanically, some good trademarks may be refused. Even though analysis of the search outcome is an important approach, successful cases regarding similar trademarks for reference will created in circumstances that have no legal basis.
The judgment handed down by the court of second instance was a good one. The court decided in the following: Although trademark adjudication implements the case-by-case examination rule, it also should keep consistency and continuity. Otherwise, it will breach the principle of consistency of protection in administrative laws and be likely to lead to many applicants getting unjust rejections. Such a judgment strengthens and provides a legal basis for the aforementioned analyses, and undoubtedly serves to guide future preparation for trademark applications.
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