It is becoming a well-known fact that nowadays obtaining a trademark registration is becoming more and more difficult in China.
Through a comparison between 2020 and 2019, we can see that approval rate of trademark registration decreased from 81% to 61%. Sometimes the applications are rejected due to grounds not even considered by the Applicant when filing the application with the CNIPA.
This is what happened to the famous American brand Tommy Hilfiger, which has recently faced a long battle with the Chinese trademark office in order to get the protection of its iconic strip-mark.
Let's start with the background of this case.
On 23 July 2018 the American company filed a trademark application for a stripe logo trademark in Class 25. Few months later, the CNIPA rejected the application arguing that the mark was similar to the national flag of the Republic of Yemen, therefore forbidden from registration.
Not ready to give up about its mark, the applicant applied for a review of the refusal before the Trademark Review and Adjudication Bureau (TRAB) of CNIPA.
In its defense, Tommy Hilfiger sustained the overall and clear differences between the mark applied for and Yemen's national flag, based on the color combination and the overall different layout.
Notwithstanding the argument, the refusal was upheld by the TRAB.
Not content with the decision (and probably defiantly), Tommy Hilfiger applied for the same trademark in Class 25 in Yemen to contest the refusal. The Yemen authority officially approved the registration on 22 October 2019.
Upon receipt of the favorable news, in December 2019 Tommy Hilfiger appealed the TRAB's decision to the Beijing IP Court. Together with the submission of the appeal, Tommy Hilfiger submitted a notarized and legalized certificate of the trademark just granted, in order to prove the bless of Yemen authority to the application.
One more time, the Chinese Authority upheld the decision.
One more time, Tommy Hilfiger appealed the decision.
On September 2021, reversing the previous decisions, the Beijing High Court ordered the TRAB to issue a new decision.
Herein a recap of the ground cited by the Court:
- it's true that Tommy Hilfiger's mark reminds Yemen's national flag in terms of overall appearance and visual effect.
- it's also true that the correspondent registration filed and granted - and notarized - in Yemen proved that the Yemen government consents to the registration of the mark in China.
All this premised made, the mark should thus be allowed for registration.
Conclusion
Article 10.1.2 of the Chinese Trademark Law establishes that: "None of the following signs may be used as trademarks: (1) Those identical with or similar to the State name, the national flag, emblem or anthem, the military flag, emblem or songs, or medals of the People's Republic of China; or those identical with the names or emblems of Central State organs, the names of the specific locations where the Central State organs are seated; or those identical with the names or designs of landmark buildings; (2) Those identical with or similar to the State name, national flag, national emblem or military flag etc., of a foreign country, except with the consent of the government of that country".
Indeed, as the case shows us, it is possible to overcome CNIPA refusal under article 10.1.2 by proving and submitting evidence about the consent obtained by the foreign Country on the use of the flag as trademark, and the trademark protection granted by the Country constitutes a demonstration of consent. This opens a path for companies to get their trademark registrations in China granted in the end.
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