Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
OKAYAMA Non-registration Case entrusted to Linda Liu & Partners selected as ”Excellent Trademark Cases of 2017-2018”
Case Brief
Entrusted by the four opponents of Okayama-ken Government, Okayama Chamber of Commerce and Industry, Okayama-ken Chamber of Commerce and Industry Association, and Okayama-ken Central Committee of Small and Medium Sized Enterprise Association (hereinafter referred to as the opponents), Linda Liu & Partners filed an objection to the trademark “OKAYAMA” (hereinafter referred to as the objected trademark) which was applied by Hong Kong Louis John Brand Co., Ltd. (hereinafter referred to as “the person challenged”).
The main objection reasons of the opponents are: (1) “OKAYAMA” is the English expression of “Okayama (冈山)”. The Chinese character “冈山” has a unique correspondence with the English expression “OKAYAMA”. It has a high awareness in China and is a foreign place name known to the public. (2) The challenged person has always been maliciously imitating well-known trademarks of other people. (3) “Okayama White Peach” has long been registered as a geographical indication in Japan. The registration of the objected trademark can easily mislead the public, causing confusion and misunderstanding of the source of the goods.
After review, the Trademark Office held that “OKAYAMA” is the name of the Japanese county and city which belongs to foreign place names known to the public. The objected trademark is the same with the place name, and thus violates Article 10 of the Trademark Law. Moreover, “OKAYAMA” is deceptive when used as a trademark on the above-mentioned goods, and can easily cause the public to misidentify the origin of the goods. In accordance with the provisions of Article 10.1 (7), Article 10.2, and Article 35 of the Trademark Law, the objected trademark shall not be registered.
Significance of the case
In this case, the Trademark Office applied the provisions of Article 10.2 of the Trademark Law, and actively considered the correspondence between foreign and Chinese geographical names for the protection of foreign geographical names known to the public so as to protect corresponding Chinese and foreign geographical names. In addition, in light of causing misunderstanding of the source of goods or services, the Trademark Office provided protection in accordance with Article 10.1 (7) of the Trademark Law. This case not only provides new ideas for activists of well-known geographical names in foreign countries, but fully exhibits a high sense of responsibility and strong execution of the trademark presiding authority in cracking down on malicious cybersquatting and protecting the intellectual property rights of Chinese and foreign trademark owners, thereby greatly enhancing the confidence of overseas defenders in exercising their rights in China.
