CHANG TSI
Insights
The client's trademark "WI-CARE PURE" in Class 9 was initially rejected by the China National Intellectual Property Administration (CNIPA) on the grounds that it "lacks distinctiveness as a trademark for the designated goods," in violation of Article 11.1.(3). Generally, overcoming a refusal based on lack of distinctiveness during the review stage has a low success rate. In this case, we actively argued the distinctiveness of the trademark based on its composition and meaning. Additionally, we actively communicated with the client to collect and submit evidence of use of the mark in China. Ultimately, we overcame the refusal during the review process. The Trademark Review and Adjudication Board (TRAB) concluded that the trademark, as a whole, possesses the required distinctiveness and can be effectively recognized by the relevant public as a trademark for the designated goods in Class 9.
The client's trademark "WI-CARE PURE" in Class 9 was rejected by the China National Intellectual Property Administration (CNIPA) on the grounds that it "lacks distinctiveness as a trademark for the designated goods," in violation of Article 11.1.(3).
Generally, the success rate of overcoming a refusal based on lack of distinctiveness during the review stage is not high. Additionally, the terms "CARE PURE" in "WI-CARE PURE" have a slogan-like nature, and the trademark is a pure word mark without any special design elements to enhance its distinctiveness. Furthermore, the trademark is not of high fame and popularity domestically. Therefore, overcoming this lack of distinctiveness refusal ground presents certain challenges.
On one hand, we discussed thoroughly with the client in relation to the use of the mark, relevant evidence to prove the use, etc. We then asked the client to provide us with all the evidence at hand in relation to the “WI-CARE PURE” mark.
On the other hand, we carefully reviewed the client's website and product descriptions, arguing that the applicant (abbreviated as I-care) is a global leader in the field of predictive and prescriptive maintenance. "WI-CARE PURE" is a coined phrase where "I-CARE" directly refers to the applicant, and "PURE" stands for "Portable Unit for Route and Expertise," indicating that the product is a portable device for route and expertise. The "W" added before "I-CARE PURE" forms "WI-" which is the first part of the term "WI-FI," referring to wireless network, suggesting that the product is a wireless data collection system for routes and expertise.
The overall design concept emphasizes that the applicant's portable device for routes and expertise is a wireless data collection system. Therefore, the overall meaning of the trademark "WI-CARE PURE" can be understood as "a wireless portable device for routes and expertise provided by the applicant."
Based on the above analysis and the use evidence submitted by the client, we argued in the refusal review application that the applied trademark is original and not an industry term, and inherently possesses distinctiveness and registrability.
Finally, the CNIPA decides that: The trademark "WI-CARE PURE" as a whole possesses the distinctiveness required of a trademark. When used on the specified goods in Class 9, the relevant public can effectively recognize it as a trademark. It does not violate the provisions of Article 11, Paragraph 1, Item (3) of the Trademark Law. Thus, the decision was made to approve the Chinese designation for the international trademark "WI-CARE PURE" on its designated goods in Class 9 in China.
Firstly, from winning the review of refusal case, we well protected the business interests of our client and maximize the benefits of our client.
Secondly, through this case, we have gained a deeper understanding that when facing a rejection based on a lack of distinctiveness, we should actively argue from the composition and meaning of the applied trademark itself, detailing its inherent distinctiveness. Additionally, we should communicate with the client to collect and submit more evidence of the trademark's use domestically. When the examiner finds our arguments sufficiently persuasive, it is possible to overcome the lack of distinctiveness rejection during the review process.
Thirdly, through this case, we further confirmed that for any cases, we shall analyze cases in different angles, locate the specific point(s) in our and the client’s favor, then elaborate the point(s) in depth and try our best to win the case.
