CHANG TSI
Insights
In recent trials of trademark right granting and verification cases, the China National Intellectual Property Administration (CNIPA) has increasingly tightened the review on whether a trademark violates the distinctiveness clause and the misrecognition clause. Although the trademarks "ECOLAB" of the plaintiff, ECOLAB USA INC., have long been approved for registration and put into use, the CNIPA repeatedly determined that "ECOLAB" can be translated as "ecological laboratory" when Ecolab applied for continuous trademark registration, and thus rejected the applications on the grounds of the trademark lacking distinctiveness or violating the misidentification clause. In this regard, the plaintiff filed the lawsuits claiming that the trademark does not violate the relevant legal provisions and has the registrability.
The plaintiff contends in the lawsuit that "ECOLAB" is the English trade name of ECOLAB USA INC., and the corresponding Chinese trade name is "YiKang", which should not be translated as "ecological laboratory". Moreover, the word "ECOLAB" has its distinctiveness and can be recognized as a trademark by the relevant public, which can serve to distinguish and identify the source of goods. Meanwhile, the registration and use of the trademark in dispute on the specified goods or services will not cause confusion.
During litigation, the plaintiff further submitted to the court news reports, awards, exhibition photos, sales contracts and other relevant documents, as well as the Chinese interpretation of the word "ECOLAB" as supplementary evidence. After hearing, the Beijing Intellectual Property Court supported the plaintiff's claim, finding that "ECOLAB" is consistent with the applicant's English trade name rather than a fixed term in English, and the public will not understand it as "ecological laboratory", so it is registrable and not misleading. Consequently, the court overruled the CNIPA's determination.
"ECOLAB" is the English trade name and main trademark of ECOLAB USA INC., which has been used for decades. In recent years, the CNIPA has interpreted its Chinese meaning as "ecological laboratory," arguing that it lacks distinctiveness or is misleading. This has resulted in the plaintiff's trademark being difficult to register, which greatly affects the plaintiff's overall brand protection strategy. Under these circumstances, the plaintiff may find it challenging to secure their rights, and any subsequent activism will be more complicated.
First, regarding the Chinese meaning of "ECOLAB", after conducting research, it has been found that the term "ECOLAB" is not translated as "ecological laboratory" in major authoritative and online dictionaries. Simultaneously, in response to the incorrect interpretation from an online translation website, we have also actively sent a letter to communicate, requesting a correction of the corresponding Chinese meaning. This indicates that "ECOLAB" itself is an imaginary word, not a fixed term with dictionary meaning, and as the plaintiff’s English trade name, it should not be translated as "ecological laboratory".
Second, for the issue of trademark distinctiveness, we further communicated with the plaintiff to actively gather evidence of use, based on explaining the distinctiveness of "ECOLAB" itself, and carried out full search in China National Library and webpage notarization to prove that the trademark and trade name "ECOLAB" have been used for decades and can serve to distinguish and identify the source of goods.
Finally, in response to the issue of whether the trademark is deceptive, we elaborated in detail that the relevant public will not misrecognize the specified goods or services when they encounter the trademark in dispute, considering the general level of public cognition. Moreover, the CNIPA, as the defendant, did not provide an explanation for the potential misrecognition of the trademark in dispute. By addressing these points, we effectively refuted the determination that the trademark is deceptive.
After administrative proceedings, we obtained two first-instance administrative judgments, which overturned the CNIPA's determination that the trademark in dispute lacked distinctiveness and violated the misrecognition clause.
In one judgment, the Court found that "ECOLAB" was not a fixed term in the English language, consistent with the plaintiff's English trade name, and the relevant public would not understand it as "ecological laboratory". Therefore, there is no basis for the respondent to decide it is deceptive.
In another judgment, the court found that "ECOLAB" has distinctiveness, which can be identified by the relevant public and serve to distinguish the source of goods, so the trademark in dispute is registrable, and does not violate the provisions of Article 11, paragraph 1 (3) of the Trademark Law.
First, this case highlights the improper translation of the corresponding Chinese meaning of the English trademark. We addressed this issue by sending a letter to the online translation website company requesting a modification of the Chinese meaning, which offers a precedent for similar cases.
Second, after the applicant secures the trademark registration, we should remind the applicant to actively use and promote the registered trademark and to retain relevant evidence of the trademark's use. This is to maximize the consolidation of the rights that have been acquired and to guard against possible legal and policy changes in the future.
Third, even if an applied trademark is repeatedly refused by CNIPA due to lacking distinctiveness or being misleading, we can still overcome such rejection in the subsequent administrative litigation stage. Especially for trademarks that have been registered and used for many years, the court is more cautious in determining whether the trademark violates the registrability. In similar cases, we should advise the applicant to actively pursue litigation, devise countermeasures, and take action against the grounds for rejection based on the absolute clause, in order to protect its legitimate rights and interests.
