Judicial Protection for Color Combination Trademarks in China

Chen Jihong Wang Zhonglian Beijing Zhonglun Law Firm,[Patent]


According to Article 8 of China's Trademark Law, any sign that distinguishes the goods and services of an individual or organization from those of others, including any words, graphs, letters, numbers, three-dimensional signs, colour combinations, sound and combinations thereof, may be registered as a trademark.
In China, color combination trademarks have been written into law since the Trademark Law was revised in 2001. Prior to this, China did not have color combination trademarks. However, from a global perspective, color combination trademarks have been recognized earlier in other countries. For example, the United States confirmed that color combination trademarks could obtain judicial protection through the case of Qualitex Co. v. Jacobson Prods. Co. in 19951. In Europe, color combination trademarks have been widely used in various industries, and many related cases have appeared, such as the Red Bull color combination trademark case.
In China, the judicial protection of color combination trademarks is still in its infancy, and there are very few cases. The cases that can be found include the Deere & Company case2 and ANDREAS STIHL AG & CO. KG case3. As a special type of trademark, the color combination trademark includes two elements: "color" and "method of use". In the process of determining infringement, in addition to comparing the goods with conventional trademark infringement determinations, it is even more important to compare colors and how they are used, and to consider the announcement of color combination trademarks, etc. The confirmation of the type of trademark also requires evidence from the right holder. In this article, the author will discuss the topic of judicial protection of color combination trademarks in China through Roxtec suing a company over trademark infringement disputes in order to help related business personnel.
Case review
Founded in Sweden, the plaintiff Roxtec AB is a world's leading supplier of modular sealing systems. Its first Multidiameter ™ technology can adapt to a variety of cables and pipes, completely changing the traditional Cable laying and pipe installation processes and providing a wide range of sealing solutions for different industries.
The plaintiff owns the color combination trademark No. 11915216  in China and is registered on Class 17 products, including sealing balls, seals, non-metallic bushings, and seals for joints. The exclusive right period is from August 28, 2015, to August 27, 2025. The trademark is currently valid.
The defendant company is a seal manufacturer in Suzhou, which specializes in seals, power seals and telecommunications seal components.
The plaintiff believed that the defendant used the same trademark as the plaintiff's color combination trademark on the sealed component products, which constituted the situation stipulated in Article 57 (1) of China's Trademark Law, and then sued the Beijing Dongcheng District People's Court to request The defendant stopped infringement and compensated for losses. In the end, Beijing Dongcheng District People's Court and Beijing Intellectual Property Court both found that the defendant infringed the plaintiff's color combination trademark and made a judgment on stopping the infringement and compensating for the infringement of the plaintiff's color combination trademark4.
Case comments
This case is not a regular case. There are many facts in the trial process that need to be considered and confirmed, which need to be analyzed and judged by the court to reach a conclusion.
(I) How to confirm the type of trademark
In this case, the plaintiff's trademark certificate showed that the trademark was "designated color". So, how does the plaintiff prove that the trademark which it has exclusive rights to is a color combination trademark rather than a graphic trademark of a specified color?
In this regard, in addition to submitting the trademark registration certificate, the plaintiff in this case also submitted a copy of the trademark application, the amendments and refusal review decisions in the application process as evidence to prove that the trademark was a color combination trademark. In the "Trademark Description" section of the trademark application, the plaintiff specified the number of the color combination, and also clarified that the color combination trademark had certain graphic restrictions in actual use, that is, "blue and black are used in the form of concentric circles on the designated product, the black circle is at the center and surrounded by a blue frame "(see figure 1 example).
               Figure 1 Example of color combination trademark No. 11915216
The above content fully meets the requirements of the Trademark Law for color combination trademark applications. In the end, according to the content of the plaintiff's trademark application, the court confirmed that the trademark in question was a color combination trademark rather than a graphic trademark of a specified color.
(II) How to determine the color combination trademark infringement
How is the right protection scope of color combination trademarks defined? In this case, the two parties have no dispute over the same goods themselves, so we only analyze from the perspective of the trademark itself.
1. Are trademarks the same or similar?
As shown in Figure 2, it is the defendant's product involved in this case.
               Figure 2 Product illustration of the defendant involved in the case
2. Are the trademark colors the same or similar?
The trademark actually used by the defendant in this case was the color combination of blue and black (the color number is slightly different from the plaintiff's trademark). The Beijing Dongcheng District People's Court and the Beijing Intellectual Property Court both commented that the overall visual appearance of the defended infringing trademark was not significantly different from the plaintiff's trademark, and should be judged as the same trademark according to the general attention of the relevant public.
3. Are the methods of use the same or similar?
In this case, the color combination of blue and black used in the infringing trademark was exactly the same as the plaintiff's trademark declaration, that is, " blue and black are used in the form of concentric circles on the designated product, the black circle is at the center and surrounded by a blue frame". From this point of view, the two were used in the same way. Although the defendant argued that the use of the trademark in the case had technical functionality and should not be protected, in this case, only the concentric circle structure of the sealing component was functional, and the color used did not have any functionality. The defendant could have chosen other colors rather than a blue-black color combination. Therefore, the defendant's argument that the use method has technical functionality was not valid.
(III) Judgment limits of infringement of color combination trademarks
In this case, while the defendant used the color combination trademark on its products, other colors and the defendant's own trademark and company name were also been used. So, what is the limit of infringement determination of color combination trademarks?
The author believes that the delimitation of infringement determination of color combination trademarks should take into account the graphic restrictions (such as position relation and use methods) declared by the right holder in the trademark description, and return to the foundation of the trademark infringement determination, that is, whether it may confuse.
In the infringing products involved in this case, it uses blue and black color combinations (the use is exactly the same as the graphic restrictions of the plaintiff's color combination trademark), also white insulating sleeves, metal fastener units, as well as the defendant's trademark and company name. According to the analysis above, the infringement determination must take into account whether it may constitute confusion. The court of first instance stated in the judgment that "the plaintiff's related products have a long sales time and wide geographical scope, enjoy a certain popularity in the relevant public, and the defendant's use of the same trademark as the trademark in question on the same product can easily cause the relevant public to mistake it for the trademark in question. It also prevented the plaintiff from further strengthening the corresponding relationship between the trademarks involved in the case and its products among the relevant public. Although the defendant argued that its own trademarks and company names were marked on the assembled and sold products, and relevant certificates documents were required to be produced during the sales process, but in the case that the alleged infringing goods use the exact same trademark as the case, it will still cause the relevant public to mistakenly believe that the supplier of the infringing goods has a specific relationship with the plaintiff in terms of business, organization, or the law. Moreover, in the use process after purchase, it will also cause confusion and misidentification by others, thereby causing damage to the plaintiff's trademark in question." Similarly, in the Deere & Company case, the alleged infringing product was still identified as trademark infringement even under the defendant's trademark; in this case, the court also made an analysis based on the criterion of whether it would cause confusion and reached a conclusion of infringement.
(IV) Other factors to be considered in the judgment of infringement
Consistent with the determination of common trademark infringement cases, that of color combination trademarks should also consider the popularity of trademarks of the right holders and the malicious use of trademarks by the accused infringer, which is conducive to the determination of confusion and improving the amount of compensation.
The trial ideas of the aforementioned Deere & Company case and ANDREAS STIHL AG & CO. KG case are similar to this case. The above two cases are typical cases of color combination trademarks and provide jurisprudential support for the smooth progress of this case.
In summary, it can be seen from this case that the main points of the judgment of color combination trademark infringement are mainly: a. confirmation of the nature of the trademark (color combination trademark) and confirmation of the protection scope of the color combination, i.e. color and actual use; b. Infringement comparison: the same approximate comparison of the colors of products, trademarks color, and usage methods; c. the possibility of confusion; d. the popularity of the right holder and the malicious use of the color combination trademark by the accused infringer. The above four points are reflected in both trial judgments in this case. It is believed that the trial of this case has important reference significance for the judgment of future color combination trademark infringement cases.
Thoughts on Judicial Protection of Color Combination Trademarks
At present, the judicial protection of color combination trademarks in China is still in its infancy, and there are not many cases that can be of reference and few courts with real judicial trial experience. The effective protection of color combination trademarks in China still has a long way to go.
First of all, the protection of color combination trademarks has been very rough since the trademark application stage. Most color combination trademarks have undergone refusal review. For example, Roxtec's color combination trademarks had undergone up to three years of refusal review and administrative litigation before they were finally registered. In the process of trademark registration, there are also cases where color combination trademarks are examined as graphic trademarks of specified colors, which causes the problem of multiple cited trademarks. In addition, although the color combination trademark has huge visual impact and strong distinctiveness on the one hand, it is also a common phenomenon that it is rejected due to lack of distinctiveness during the registration process. In addition to the distinctiveness of the trademark itself, trademark applicants also need to submit a large amount of evidence during the application process to prove that their color combination trademarks have acquired distinctiveness through long-term and large-scale use. This requires that color combination trademarks must be actually used, which is different to ordinary trademark application. In short, it is difficult to apply for a color combination trademark.
Secondly, even in the announcement of the registration of the color combination trademark and its trademark registration certificate, it is still shown as "designated color", so that the right holder must prove that the type of his trademark is a color combination trademark, not a graphic trademark of the specified color. This unreasonably increases the burden of proof on the right holder. In this regard, the Beijing Higher People's Court issued guidelines in its (2016) administrative judgment No. 55: in the process of re-examination of trademarks, the Trademark Review and Adjudication Board may consider coordinating and communicating with the Trademark Office to further improve the way of announcement of color combination trademarks. The content of the trademark description in the Trademark Registration Application should be announced to ensure that the relevant public can know the composition of the color combination trademark displayed in a specific graphic form through the Trademark Announcement and the trademark registration certificate in order to avoid possible misunderstandings and confusions.
Thirdly, in the trial of color combination trademark infringement cases, the court should also pay special attention to the scope of trademark protection. Specific cases should be analyzed in detail. Cases should not be applied mechanically to prevent the unreasonable expansion of the scope of protection and to cause monopoly or adverse effects on trademark use and management.
Finally, despite various existing problems, from the current domestic market, we should still actively treat the emerging color combination trademark issue. In addition to the color combination trademarks such as Deere & Company's yellow-green color combination trademarks, and Roxtec's "blue-black" color combination trademarks discussed in this article, which have been successfully registered, some other enterprises have also entered the stage of defending their own interests with color combination trademarks. However, more companies are still unaware of the existence of color combination trademarks. As a very distinctive trademark, if the color combination trademark can be registered, it will be very helpful to identify the source of the product. For example, the different color uniforms of delivery staff wears, besides, the color of the taxi in different cities can also consider applying for color combination trademark registration. Of course, in this field, there are still many questions worth thinking about, for example: Can a single color be registered as a color combination trademark in the case of Christian Louboutin' red-soles shoes? We will wait and see the progress of related issues.
The author also believes that after a period of development in China, color combination trademarks will inevitably become a wide choice for enterprises, and their judicial protection will be further improved.
1. H. David Starr, Gregory G. Bennett., Trademark Protection of Color Marks in the United States, Issue 30
2. (2014) Beijing People's High Court Civil Judgement of second instance No.382 of trademark infringement dispute and unfair competition
3. The civil judgment of the first instance of trademark disputes on ANDREAS STIHL AG & CO. KG suing Yongkang Meilin Machinery Co., Ltd. And Yongkang Linka Trading Co., Ltd.
(2017) Beijing 0101 Civil Judgment No. 20603, (2019) Beijing 73 Civil Judgment No. 2736.

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