Case Brief

The graphic trademark "" (designated colors) (hereinafter referred to as the "disputed trademark") of the retrial petitioner,  Zhongshun Jierou Paper Co., Ltd. (hereinafter referred to as "C&S"), was approved for registration on May 7, 2011. It is designated for use on goods in Class 16, including " facial tissues; toilet paper; paper towels".

On March 1, 2021, an X paper company filed a request for invalidation against the disputed trademark on the grounds that it lacks distinctiveness and occupies public resources. The China National Intellectual Property Administration issued a ruling,  upholding the registration of the disputed trademark. The X paper company was dissatisfied and filed lawsuits with the Beijing Intellectual Property Court and, subsequently, the Beijing High People's Court. The court of first instance dismissed its claims. However, the court of second instance held that the disputed trademark was more likely to be perceived by the relevant public as a product decoration, rather than functioning to distinguish the source of the goods, and thus the trademark lacked inherent distinctiveness. Moreover, the evidence submitted by C&S was insufficient to prove that the disputed trademark had acquired distinctive features through use. Consequently, in accordance with  Article 11.1(3) of the Trademark Law, the court of second instance reversed the judgment of the first instance and revoked the challenged ruling. C&S, dissatisfied with the judgment of the court of second instance, filed a request for retrial with the Supreme People's Court.

After the Supreme People's Court brought the case up for review, it reversed and revoked the judgment of the court of second instance, i.e., the Beijing High People's Court, which had ruled in favor of the X paper company in the lawsuit.

Typical Significance

The core issue in this case relates to the criteria for determining trademark distinctiveness under Article 11 of the current Trademark Law.  The judgment of retrial emphasized that issues arising from a trademark's use after its registration can be addressed through the procedure of trademark right revocation, rather than through an abuse of the absolute grounds of lacking distinctiveness under Article 11 of the Trademark Law to invalidate the trademark. The retrial judgment in this case holds significant reference value for clarifying misconceptions in the handling of similar cases in judicial practice.