Judicial judgment of deceptive signs - Comment on the administrative case of trademark application refusal and review between China Trademark Review and Adjudication Board and Northern Trust Group
Gist
“Easy to mislead the public” is the core element of deceptive sign recognition. The specific determination can be considered from the sign orientation, the overall misleadingness, the possibility of deception, the category of goods used and the subject of registration, the judge subject, and the degree of misrecognition.
Case
The application for Trademark No. 12414773 “北美信托银行”, filed on April 12, 2013, and with its applicant Northern Trust Group, is designated for use in the 42nd category of research and development (for others), computer hardware design, development consulting and other services.
In response to the application for the trademark registration, the Trademark Office of the State Administration for Industry & Commerce made a notice of trademark refusal and rejected the application. The Northern Trust Group was not satisfied with the refusal, and filed a review application with the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Review and Adjudication Board) within the statutory time limit, requesting preliminary approval of the application for registration of the trademark. The Trademark Review and Adjudication Board made a decision on the appeal to reject the application of the trademark registration, on the ground that the trademark constitutes the situation referred to in Article 10 (Item 1-7) of China Trademark Law amended in 2013 (hereinafter referred to as the China Trademark Law of 2013).
The Northern Trust Group refused to accept the refusal and filed an administrative lawsuit in Beijing Intellectual Property Court.
The Court found that the China Banking Regulatory Commission approvals, financial licenses, media reports, the “Northern Trust Bank” trademark registered by the Northern Trust Group in the United States and the authorization issued by the United States Northern Trust Bank Ltd. Beijing Branch (hereinafter referred to as the Northern Trust Bank Beijing Branch) are clearly stated as follows: 1. Northern Trust Bank Beijing Branch is the branch of Northern Trust Bank in China. 2. The Northern Trust Bank Beijing Branch confirmed that “Northern Trust Bank” is the trade name/trademark used by Northern Trust Bank in business, and the former is using the trade name/trademark and the corresponding Chinese translation “北美信托银行”in China. The Northern Trust Bank Beijing Branch authorized the Northern Trust Group to use and apply for the registration of “北美信托银行” and “Northern Trust Bank” trademarks in China for the benefit of the former, and later become the owner of the registered trademarks. 3. The Northern Trust Group is the holding parent company of Northern Trust Bank, so there is no conflict of rights and interests between the former and Northern Trust Bank Beijing Branch. In addition, the Northern Trust Group also submitted other registered trademark files inconsistent with the applicant’s name, (2013) Gao Xing Zhong Zi No. 1974 Administrative Judgment, etc. to prove that the registration and the mode of use of the trademark would not make the relevant public misrecognized.
Judgment
The Beijing Intellectual Property Rights Court held that there was no substantive difference between the company name “Northern Trust Bank” included in the trademark and the Northern Trust Group, and the trademark did not constitute the situation referred to in Article 10 Item (1-7) of China Trademark Law of 2013. According to the provisions of Article 70 Item 2 of Administrative Procedure Law of the People's Republic of China, the judgment was as follows: 1. The decision on the respondent was withdrawn; 2. The Trademark Review and Adjudication Board made a new decision.
The Trademark Review and Adjudication Board disagreed and filed an appeal. The Beijing Higher People’s Court believed that the trademark did not directly point to the characteristics of “research and development (for others), computer hardware design and development consulting” and other services, thus produced deception and misrecognition. The Northern Trust Group is the holding parent company of Northern Trust Bank, according to the authorization certificate issued by Northern Trust Bank Beijing Branch, which, as the branch of Northern Trust Bank in China, authorizes Northern Trust Group to use and register the trademark in China. There is a de facto correlation between Northern Trust Group and Northern Trust Bank Beijing Branch and the company name “Northern Trust Bank” included in the trademark does not differ substantially from the Northern Trust Group. On the whole, the relevant public would not be misled by the trademark. Although there are inconsistencies between the trademark and the name of the Northern Trust Group, due to the affiliation and interest consistency of the Northern Trust Group and the Northern Trust Bank Beijing Branch, the registration and use of the requested trademark had also been authorized by the Northern Trust Bank Beijing Branch, the relevant public of “research and development (for others), computer hardware design and development consulting” and other services would not misrecognize the service quality for registration of the trademark in the above-mentioned services by the Northern Trust Group. The Northern Trust Group’s application for the registration of “北美信托银行” as a trademark conforms to banking conventions regarding the use of logos. The trademark is not deceptive. Therefore, the application for the trademark registration does not constitute the situation referred to in Article 10 Item (1-7) of China Trademark Law of 2013.
The Beijing Higher People’s Court, in accordance with Article 89 Item (1-1) of Administrative Procedure Law of the People’s Republic of China, decided that the appeal should be dismissed and the original judgment be upheld.