Tommy Hilfiger successfully appeals the CNIPA’s refusal of its stripe logo mark

Article 10 of China’s Trademark Law enumerates the circumstances in which a trademark application will be ex officio refused by the China National Intellectual Property Administration (CNIPA). These are known as absolute grounds. Article 10.1.2 prohibits a sign that is identical or similar to the national flag of a foreign country from being used (and registered) as a trademark, unless the consent of the government of that country is obtained.

Facts

On 23 July 2018, Tommy Hilfiger filed a trademark application for a stripe logo trademark (shown below) in Class 25. It was rejected on 24 December of that year by the CNIPA on the grounds that the mark is similar to the national flag of the Republic of Yemen.

Tommy Hilfiger’s mark

Tommy Hilfiger’s mark

 

Yemen’s national flag

Yemen’s national flag

On 29 January 2019, Tommy Hilfiger filed for review of refusal before the CNIPA’s Trademark Review and Adjudication Department (TRAD), on the grounds that differences in colour combination, layout and length-to-width ratio between its mark and Yemen’s national flag make them distinguishable. The TRAD dismissed this argument and upheld the refusal on 23 July 2019.

Alongside the review of refusal, Tommy Hilfiger filed an application for the same device mark in Class 25 in Yemen in order to contest the refusal. The Yemen authority granted the registration on 22 October 2019.

In December of that year, Tommy Hilfiger appealed the TRAD’s review of the refusal before the Beijing IP Court. It submitted a notarised and legalised trademark registration certificate issued by the Yemen authority to prove that it had obtained the consent of the Yemen government to the registration of the litigious trademark. On 20 July 2020, the Beijing IP Court confirmed the refusal.

Tommy Hilfiger subsequently appealed to the Beijing High Court, which on 22 September 2021 repealed both the first-instance decision and the Beijing IP Court’s confirmation of this and ordered the TRAD to rehear the case. The appeal court made the following points:

  • Tommy Hilfiger’s mark was similar to Yemen’s national flag in terms of overall appearance and visual effect.
  • The notarised and legalised registration certificate issued by Yemen indicated that Tommy Hilfiger had registered the same device mark, designating roughly the same goods, in Yemen, from which the government’s consent to the registration of the disputed mark in China should be presumed.
  • In compliance with the exception clause of Article 10.1.2 of the Trademark Law, the mark should be granted registration.

Comments

It has become increasingly difficult to obtain a trademark registration in China. In 2020, the CNIPA’s approval rate decreased from 81% to 61%. As far as the review of refusal is concerned, only 4.7% of the CNIPA’s decisions are reversed in the first instance of administrative litigation, if the agency excludes change of circumstances where the obstacle to the registration of the refused trademark has been removed from the statistics.

In practice, in order to overcome an ex officio refusal relating to Article 10.1.2 by the CNIPA, an applicant needs to submit evidence confirming government approval of the mark from the foreign country in question. As a practical and more viable alternative, an applicant is advised to obtain registration of the same mark designating the same goods/services in that country.


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