We Serve the Latest News of IP Industry
for Your Reference
After four rounds of trials and judgments, the Trademark Review and Adjudication Board, Beijing Intellectual Property Court, Beijing Higher Court and the Supreme People's Court finally ruled that the trademark "PARIS BAGUETTE and Patterns", owned by Korean company Paris Croissant, does not violate the two provisions of the Trademark Law on prohibiting the use of foreign place names known to the public, nor does it cause misidentification of marks in terms of place of origin. The courts therefore maintained the registration of said mark.
In 2007, Paris Croissant applied for registration of the trademark "PARIS BAGUETTE and Patterns" (disputed trademark), and approved its use on goods under class 30, including fried doughnuts, ice cream, biscuits (cookies), baked wheat cakes, bean paste bread, rolls, dumplings, muffins, bread, jam bread, cakes, etc., and was approved for registration in 2015 with the trademark number 6306376.
In 2017, Beijing Balibeitian Enterprise Management Co., Ltd. filed an application for invalidation of the trademark. After trial, the Trademark Review and Adjudication Board held: the disputed trademark consists of the word "PARIS BAGUETTE" and graphics, and although the whole trademark can be translated as "French bread", the disputed trademark also contains other elements such as tower graphics, which, as a whole, can be distinguished from name of place by the relevant public. In addition, the trademark in dispute is not deceptive, and is not harmful to social morality or has marks with other adverse effects. Moreover, the disputed trademark has been registered and used for many years, and a relatively stable market structure has been formed through publicity and use. At present, there is no evidence to prove that the registration and use of the disputed trademark would easily cause the relevant public to misunderstand the quality and origin of goods or bring any adverse social impacts. Therefore, the Trademark Review and Adjudication Board ruled that the registration of the disputed trademark shall be maintained.
Unsatisfied with the ruling, Balibeitian filed an administrative lawsuit with Beijing Intellectual Property Court. The court held that the two trademarks in dispute contained name of foreign place, and were misleading in terms of the place of origin, thereby violating the provisions of China's Trademark Law, and ruled invalidation of the trademarks in dispute.
Croissant filed a second-instance lawsuit with the Beijing Higher People's Court, and submitted the evidential materials, including the publicity report on the disputed trademark, the annual audit report, the sales and operation status, as well as the market research report. The court of second instance held: in addition to the graphics, the trademark in dispute contained parts that are difficult to identify and read, which has a meaning different from place names as a whole. In addition, the disputed trademark and its obligee have profound background of French culture. The production process, product characteristics and flavor of the approved goods are also of close relationship with France. Therefore, the "PARIS" in the disputed trademark conveys more information about the quality and flavor of the goods to the public, but this information does not exaggerate the quality and other characteristics of the goods, and thus does not lead to misunderstanding of the public.
Balibeitian refused to accept the judgment of the second instance, and filed a retrial application with the Supreme People's Court. After trial, the Supreme People's Court finally rejected the application of Balibeitian and upheld the ruling of second instance.
In some cases, enterprise names may not be successfully registered as trademarks due to various reasons, but the continuous promotion and
use of the trademarks can still make them remarkable. However, in this process, enterprises shall keep in mind that any evidence might turn out to be useful in future dispute to guard itself from being exploited.