Trial Docket: (2015) JingZhiXingChuZi No. 1638
Appellate Docket: (2016) JingXingZhong No. 55
City of Beijing
[Headnotes]
Color combination mark, as a type of trademark akin to design marks, although limited to a specific presentation in the examination process where the relevant color combination must be embodied objectively in certain graphic shape, it is inappropriate to confine the color combination to that shape, thence transforming the mark from one with a single limitation of color combination into another of both color combination and the shape.
[Synopsis]
Plaintiff (Appellant): Roxtec AB (Roxtec)
Defendant (Appellee): Trademark Review & Adjudication Board of State Administration for Industry & Commerce (the Board)
Plaintiff Roxtec on December 19, 2012 filed a trademark application with the Trademark Office of the State Administration for Industry & Commerce (the Trademark Office) under No. 11915217 for a color combination mark (the Mark under application) designating goods in class 6 for "metal pipes for cable, metal pipes (made of metal), metal penetration pipes, metal cotters." The Trademark Office issued a final office action rejecting the application for trademark registration on the grounds that the mark is similar to the mark under application No. 5106971 for "Positive Negative and Design" (Cited Mark I), and the mark under International Registration No. 1077840 (Cited Mark II). Roxtec was not satisfied with the office action, and sought review with the Trademark Review & Adjudication Board. The Board on November 28, 2014 issued its decision Review of Office Action Rejecting Application No. 11915217, ShangPingZi [2014] No.92141 (the Board Decision), holding the Mark under application to be not similar to Cited Mark II, similar to Cited Mark I for one or more designated goods therein. Based on Articles 30 and 34 of the Trademark Law, it upheld the final rejection.
Roxtec, dissatisfied with the decision, instigated judicial review proceedings. The Beijing Intellectual Property Court at trial found it to be error to compare the color combination mark with Cited Mark I and conclude that they are similar marks. Therefore the court, in accordance with Article 70(1) and (2) of the Administrative Procedure Law of People's Republic of China decreed: 1. The Board decision is reversed; 2. The case is remanded to the Board for a new decision. Dissatisfied with this decree, the Board appealed. The Beijing High Court, upon examination, held it inappropriate that the Board treats the Mark under application as "comprising two squares of different colors" and on basis thereof found it to be similar to Cited Mark I. The Beijing High Court in its final decision dismissed the appeal and affirmed the decision below.
[Judge's Comment]
Color combination mark, as a type of trademark akin to design marks, although limited to a specific presentation in the examination process where the relevant color combination must be embodied objectively in certain graphic shape, it is inappropriate to confine the color combination to that shape, thence transforming the mark from one with a single limitation of color combination into another of both color combination and the shape. Meanwhile, the appeals court pointed out that the trademark authorities need to improve methods of publishing color combination marks to ensure that the relevant public would perceive the color combination mark embodied in a particular shape as presented in the Official Gazette or the Trademark Certificate, so as to avoid possible misunderstanding and confusion. The result of this case will be beneficial to future trademark examination and review work of color combination marks or other new types of trademarks.