We would like to ensure that you are still receiving content that you find useful – please confirm that you would like to continue to receive ILO newsletters.
29 March 2021
This article discusses an exemplary trademark case from 2017.
Inner Mongolia Blue Ocean Mineral Water Company Limited registered 阿尔山 (a Chinese transliteration of 'aershan', which means hot spring in Mongolian) as a trademark in Class 32. Inner Mongolia Yunlu Water Industry Company Limited, a mineral water manufacturer located in Aershan, China, cited Articles 10(2) and 11(1)(2) of the Trademark Law to file an invalidation claim against the trademark.
Article 10(2) of the Trademark Law provides as follows:
No geographical names of administrative divisions at or above the county level or foreign geographical names known to the public may be used as trademarks, except where geographical names have other meanings or constitute part of a collective trademark or certification trademark…
The trademark in this case was the name of a place in Inner Mongolia, China, which was known for its rich mineral resources. Therefore, the trademark's registrability depended on whether the name had acquired any additional meanings other than that of the place name. The registrant failed to provide sufficient evidence to prove that its trademark had acquired any meanings through use other than that of the place name.
Article 11(1)(2) of the Trademark Law provides that "a mark [that] only directly indicates the quality, principal raw materials, function, use, weight, quantity or other features of the goods shall not be registered". This indicates that a trademark which is inherently devoid of distinctiveness is unregistrable. The trademark in this case, which was used in respect of "waters [beverages], fruit juices", was descriptive, non-distinctive and thus unregistrable.
The Aershan area had been known for producing mineral water since the Qing Dynasty. Therefore, the trademark in this case was not only the name of an administrative division but also a synonym for the famous and high-quality mineral water sources found there. The registration of the trademark could have led to a monopoly of the name and discouraged reasonable use by other mineral water businesses in the region.
On 30 November 2017 the Trademark Review and Adjudication Board found that the trademark breached Articles 10(2) and 11(1)(2) of the Trademark Law and ruled to invalidate its registration. This decision was later upheld by both the first-instance court (the Beijing IP Court) and the court of appeal (the Beijing High Court) on 29 March 2019 and 6 December 2019, respectively.
For further information on this topic please contact Zhang Han or Guo Wanying at Wanhuida by telephone (+86 10 6892 1000) or email (email@example.com or firstname.lastname@example.org). The Wanhuida website can be accessed at www.wanhuida.com.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription.