Nexus: geographical indications

Never Too Late: if you missed the IPKat last week

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You know what time it is - time for this week’s edition of Never Too Late!

I think we all know this feeling by now...

Hanne Kirk and her team at Gorrissen Federspiel (Denmark) provide a fascinating insight into the recent Danish Maritime and Commercial High Court ruling regarding the outer limits of copyright in an artwork. In this case, Danish artist 'Tal R' won an injunction against watchmakers planning to cut up one of his paintings.

Patents

Following the Munich Regional Court's decision a few months ago to issue an (ex parte) injunction ordering the defendant to withdraw an anti-suit injunction filed in a US court (an thus an anti-anti-suit injunction), the Paris Court was asked to issue a similar injunction, ultimately granting an anti-anti-suit injunction in IPCom v. Lenovo. GuestKat Peter Ling reports on this interesting decision.

Richard Vary provides a guest contribution, in which he looks into the recent decision of the United States Court of Appeals of the Federal Circuit, which overturned a decision issued in December 2017 by Judge Selna in the Central District of California, instead going to a jury trial.

Trade Marks

GuestKat Léon Dijkman looks at the recent Opinion of Advocate General Bobek in Primart Marek Łukasiewicz v. EUIPO (C-702/18), where he suggested that the possibility of submitting new arguments and evidence before the General Court in trade mark opposition proceedings could be broadened.

Katfriend Deborah Vincze provides a summary of the final implementation in France of Directive 2015/2436 on trade marks.

GuestKat Nedim Malovic examines a recent decision of the Fourth Board of Appeal, which found likelihood of confusion between two figurative marks of whales on the basis of conceptual identity, despite some visual dissimilarities between the marks.

Kat Eleonora Rosati reports on the Opinion of Advocate General Campos Sánchez-Bordona in Coty Germany v Amazon (C-567/18), in which he advised the CJEU to rule that Amazon might be potentially liable for trade mark infringement for stocking infringing goods.

Geographical indications

GuestKat Léon Dijkman looks at the judgment of the CJEU in Consorzio Tutela Aceto Balsamico di Modena v Balema GmbH (C-432/18), which ruled that "aceto" and "balsamico" are not individually protectable components of PGI "Aceto Balsamico di Modena".

Freedom of Expression and Hate Speech

SpecialKat Chijioke Okorie reports on the controversial "Hate Speech Bill" in Nigeria, which recently passed its second reading in the Nigerian Senate.

Mandatory mediation developments

Katfriend Marina Perraki summarises the just concluded legislative enactment in Greece to introduce a form of mandatory mediation, including with respect to IP infringement actions.

Conference Reports

Alina Trapova (Bocconi University) prepared a report on the recent 'More Than Just a Game' conference, held in Milan, discussing various topics such as content regulation, consumer protection, contracts and e-Sports.

In memoriam

Kat Neil Wilkof writes an 'In Memoriam' for D.C. Fontana, the creator of Mr. Spock from Star Trek.

Never Too Late 243 [Week ending 1 Dec] Common sense prevails in trade mark specification interpretation | Hold Your Colour - Cancellation Action against Nivea Blue withdrawn after 11-year Saga in Germany | Scotch-ing decision leaves a tart taste in Isetan's mouth | Crystal Head vodka 3D shape application: Who you gunna call?! | Kylie Minogue not so lucky in IPEC copyright infringement claim | When is Harvard not Harvard? | Chams Plc and another v Mastercard Asia/Pacific Pte Ltd and 5 Others - Where a contractual breach involves the misuse of IP-based confidential information | Copyright protection of fictional characters: is it possible? How far can it go? | Clarity is needed from the Boards of Appeal on the EPO's "co-applicant approach" to priority | Never Too Late: if you missed the IPKat last week | Around the IP Blogs | 'Day day up' trade mark case and two English systems in China | The real reason why the "451-page dossier" should concern you: US seeks to put "UK deviation from the EPC" on the table in future US/UK trade negotiations

Never Too Late 242 [Week ending 24 Nov] Latest fashion law developments in a 1-day course ... with an IPKat readers special discount | Never Too Late: if you missed the IPKat last week | Inventorship under the light of AI? | Tuesday Thingies | Economics and IP: the good, the bad and the ugly (and a request for reader feedback)? | Another "Glen", another GI violation- Hamburg Court considers "Glen Els" an Evocation of "Scotch Whisky" | Around the IP Blogs | BREAKING: German constitutional court Brexit-delay rumours are "bulls***" in on-going UPC saga | "Many are called but few are chose": When a claim of bad faith succeeded in a trademark matter in Singapore | [Guest Post] IP Education Series #3 | FRAND: OLG Karlsruhe rules on nature, extent and timing of obligations under Huawei v ZTE | JMLS IP Conference (Report 1): Antitrust, IP, data and FRAND - time for a retool? | Shifting the burden of proof back to the patentee (T 1299/15) | JMLS IP Conference (Report 2): Patent eligibility, anti-anti suits and the era of unpredictability | UCL IBIL Event: Boris v Corbyn v Trump - putting a price on patents, medicine and innovation | CJEU follows up on Soulier and Doke and rules that presumption of consent of performers in relation to exploitation of recordings is not necessarily contrary to EU law | GC excludes likelihood of confusion between marks representing stylised human figure and relating to same goods due to low distinctiveness of shared concept | Amsterdam district court orders Google to take offline fake reviews | [Guest post] Polish Constitutional Tribunal rules that right holders can claim damages amounting to twice a hypothetical licence fee in copyright infringement cases

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Never Too Late: if you missed the IPKat last week

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Patents, copyright, event reports, defamation, IP Education Series… you say it, we’ve got it! The roundup of the variety of news that the IPKat covered last week has arrived… because it really is Never Too Late!

Patents

The recent update by the UKIPO of its Formalities Manual added that an AI inventor is not acceptable as it does not identify "a person" as required by law. In light of this, GuestKat Frantzeska Papadopoulou examines patent applications made by AI Inventor 'DABUS', and asks us to query the implications of this current view of excluding inventions created by AI.

German ratification of the Unitary Patent Court has been a long pending process, awaiting the outcome of a complaint in the German Constitutional Court. It has been suggested that Brexit has played a role in this. However, as GuestKat Rose Hughes reports, according to the judge overseeing the German constitutional complaint to the UPC (Justice Huber), these allegations may be bulls***.

In this guest report from Rien Broekstra and Gaëlle Béquet of Brinkhof (Amsterdam) (who represent Wiko in the parallel Dutch litigation), they detail the latest development in the ongoing FRAND wars, this time from Germany, concerning the requirements for a FRAND offer.

Typically, in disputes of insufficiency before the EPO, the burden of proof is initially on the side of the party alleging that the patent or application is insufficient. However, as GuestKat Rose Hughes notes, a recent Board of Appeal decision (T 1299/15) confirms it is possible for the burden of proof to shift back to the patentee if "serious doubts" exist.

Kat Eleonora Rosati reports on the CJEU judgment in Spedidam v INA, which followed up on Soulier and Doke and ruled that a presumption of consent of performers in relation to exploitation of recordings is not necessarily contrary to EU law.

Katfriend Bohdan Widła (Barta & Kalinski sp.j. and Jagiellonian University) provides an update on recent developments in Poland concerning damages for copyright infringement, and how much can be claimed.

Trade Marks

Katfriend Penelope Ng brings us a summary of a recent trade mark case in Singapore - Dentsply Sirony Inc. v Tomy Incorporated [2019] SGIPOS 13 - in which bad faith was successfully claimed.

GuestKat Nedim Malovic looks at the intriguing judgment of the EU General Court in T-149/19, which excluded likelihood of confusion between marks representing stylised human figures despite sharing the same public, considering the latter's average level of attention and the average degree of conceptual similarity between the signs.

Geographical Indications

GuestKat Peter Ling reports on a decision by the Higher Regional Court of Hamburg, which found that use of "Glen" in "Glen Els" constituted both an "evocation" of the protected denomination "Scottish Whisky" and a "misleading indication".

Events

Looking to catch up with the latest fashion (law) trends? Kat Eleonora Rosati informed us of the next event 'Fashion Law London - The Spring/Summer Collection', to be held in London on Friday 28 February 2020. IPKat readers enjoy a discount in the registration fee as well!

Katfriend Amy Crouch (Simmons & Simmons, London) provided the first report on the 63rd UIC John Marshall Law School Annual IP Conference, on the topic of "Antitrust & IP: Does it need to be retooled?"Amy also reported on "The State of Patent Law & Policy: Views from the Top" session in her second report from the JMLS IP Conference.

In light of all of the political drama within the UK concerning the NHS, AmeriKat Annsley informed us of the UCL IBIL Innovation debate which took place a few days ago (chaired by Mr Justice Birss) where experts who understand the patent system, innovator and generic business models, drug pricing, cost of drug discovery and public health systems, explored some of the issues faced.

Defamation

GuestKat Léon Dijkman looks at an interesting decision from the Amsterdam district court which ordered Google to remove negative reviews from Google Maps's review section after concluding that they were fake.

Economics and IP

Former PermaKat Nicola Searle shares her thoughts on the current state of the impact of economics on IP, and as a bonus asks for feedback from Kat readers.

IP Education

The IP Education Series is back! In this week's instalment, Dr Janice Denoncourt discusses Generation Z, IP Education and the United Nations 2030 Agenda for Sustainable Development Goals - in particular Goal 9: to build resilient infrastructure, promote sustainable industrialisation and foster innovation.

Never Too Late 241 [Week ending 17 Nov] It may be the name of a fashion style, but is it trade mark use? | Bentley Motors found you have infringed small clothing firm’s ‘Bentley’ trade marks | Monday Miscellany | “Weel done, Cutty-Sark”--from poem to sailing ship to whisky: What’s in a name? | IPEC no longer London-focuses as IP small claims track reaches courts in Newcastle, Manchester, Cardiff and beyond | Can an employee’s freedom of expression trump their confidentiality obligations? The ECtHR weighs in (in a case concerning an employee’s personal website) | Around the IP Blogs | Wednesday Whimsies | Ferrero succeeds in enforcing is rights in the Tic Tac container before Italian court | Never Too Late: If You Missed the IPKat | In order to be irreplaceable, one must always be different: Chanel in trade mark dispute over GABRIELLE mark - again | [Guest post] Rome court rules that iconic photograph of judges Falcone and Borsellino is not a photographic artwork

Never Too Late 240 [Week ending 10 Nov] The Fruits of the Forbidden Tree - AG Opinion C-176/18 on the Boundaries of Plant Variety Rights | Book Review: Internet intermediaries and trade mark rights | case number and official translation of recent Swedish copyright referral now available | [Guest post] Event report: #FashionLawLDN - The Autumn Winter Review | Around the IP Blogs | Book Review: Global Genes, Local Concerns | BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18) | ‘Competition Law in the Pharmaceutical Sector’ returns to Brussels with IPKat discount code | Thursday Thingies | OxFirst’s 4th Symposium on IP and Competition shows the need to conceptualize FRAND internationally | Sublicensing considerations in software contracts | Discussion point: Does processing of SaaS login credentials make you a data controller? | Never Too Late: if you missed the IPKat last week | BREAKING: High Court of England and Wales weighs in on communication to the public and linking | A case for our times: Ambiguity, insufficiency and uncertainty (Anan Kasei v Neo [2019] EWCA Civ 1646) | What was the relevant undertaking? Further comments on Unilever v Shanks [2019] UKSC 45 | Benelux Court of Justice rules on well-known trade mark in a work of art | Michael Palmedo named Shamnad Basheer IP/Trade Fellow | China introduces new regulation tackling bad faith trade marks… and who is Jing Hanqing? | No economic links, no exhaustion of the “Schweppes” mark in Spain | Rolling to a stop - Jaguar Land Rover shape trade mark rejected, this time by the UKIPO | [Guest Post] Novelty of Cripps Pink Apples under Council Regulation on Community Plant Variety Rights | Conference Report: “Artificial Intelligence: Challenges for Intellectual Property Law” | Airbnb rentals and communication to the public: do you need a specific licence for your TV/radio sets? | Book launch: “The Confusion Test in European Trade Mark Law” | Call to readers: let’s talk about patent quality | Can the UK become and stay a member of the UPC? | Feilin v. Baidu: Beijing Internet Court tackles protection of AI/software-generated work and holds that copyright only vests in works by human authors

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Another "Glen", another GI Violation– Hamburg Court considers "Glen Els" an Evocation of "Scotch Whisky"

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Can a protected geographical indication (GI) be infringed by a sign that does not contain any of the words composing that GI? The CJEU recently had the opportunity to rule on this question in a case involving a German whisky under the brand "Glen Buchenbach", allegedly infringing the registered GI "Scotch Whisky" (case C-44/17, Katpost here).

Based on the CJEU decision in Glen Buchenbach, the District Court of Hamburg ultimately issued an injunction against "Glen Buchenbach" for containing a "misleading indication" within the meaning of Art. 16(c) of the Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks (the "Spirits Regulation"; Katpost here). However, it considered that "glen" was not sufficient for a finding of "evocation" of the protected GI within the meaning of Art. 16(b) of the Spirits Regulation.

The Hanseatic Higher Regional Court of Hamburg (which is the appellate court of the Hamburg District Court) has now addressed virtually the same questions regarding "Glen Els", a whisky manufactured in the German Harz region (and advertised as "Single Hercynian Malt Whisky").

The first instance court dismissed the lawsuit brought by the Scotch Whisky Association (prior to the above mentioned Glen Buchenbach decision) and the Association appealed to the Higher Regional Court (case Nr. 3 U 262/16).

Unlike in the Glen Buchenbach case, the Higher Regional Court found that the use of "Glen" in "Glen Els" constitutes both an "evocation" of the protected denomination "Scotch Whisky" (Art. 16(b)) and a "misleading indication" (Art. 16(c)). As the latter finding is to little surprise and merely confirms the outcome in Glen Buchenbach, only the analysis of Art. 16(b) will be summarized here.

An "evocation" under Art. 16(b) does not require the use of a sign that is visually or phonetically similar to the protected GI (see C-75/15 Viiniverla, Katpost here). The only relevant question is whether the average European consumer is prompted by the sign to establish a direct conceptual link to products protected by the GI, whereby a loose association of ideas is not sufficient. The Court finds that "Glen" establishes such a conceptual link to "Scotch Whisky" in this case. It reaches this outcome by considering the following:

"Glen" is a Scottish term for "valley" and it is used in whisky brands from Scotland as a reference to the valley of origin of the product. All whisky brands distributed in the EU and that contain the term "Glen" originate from Scotland.
The protected GI "Scotch Whisky" contains an explicit reference to the geographical origin. The reference to Scotland can thus be equated to a reference to the GI "Scotch Whisky". There is no difference (from the consumer's point of view) between products under the GI "Scotch Whisky" and whisky from Scotland, given that "only Scotch Whisky can be manufactured in Scotland".
The association between "Glen" and the protected GI is not merely indirect. This is confirmed by survey evidence provided by the Plaintiff, by trademark registrations and court decisions of EU member states.
The product at stake (whisky) already creates an association with Scotland. Such association is reinforced by the use of the term "Glen". In this regard, it did not help that the defendant advertised "Glen Els" explicitly as a "homage to famous Scotch brands".
The term "Els" does not have any meaning and does not change the perception of the term "Glen" by the relevant public. The survey evidence provided by Plaintiff shows, inter alia, that 37% of respondents expect a specific geographical origin when seeing the term "Glen". The design and other elements on the bottles of "Glen Els" (which in part explicitly refer to the Harz region in Germany) are irrelevant, as explicitly stated in Art. 16(b) of the Spirits Regulation.

A Word on Survey Evidence

Glen Els, the morning after

The Hanseatic Higher Regional Court opined that not all the principles that have been developed with regard to surveys relating to acquired distinctiveness can be applied to surveys regarding the expectation of a geographical origin. In particular, the Plaintiff was correct to include those respondents who declared that they had never previously heard of the term "glen", as they may still have relevant expectations of origin with regard to this term, for the reason discussed above.

Although the survey evidence does not show that a majority of respondents understand "glen" as an evocation of "Scotch Whisky", it does show that a relevant share of respondents understand "glen" as a reference to Scotch Whisky (14%) or Scotland (10%). Thus, one fourth of respondents recognized some kind of association to the geographical origin of Scotch Whisky. A further 6% associates the term with whisky and 8% with a product of particular (high) quality. Although the survey does not constitute substantive proof of Plaintiff's claim, together with the rest of the evidence on file, it does support the Plaintiff's case.

Picture on the left by Michael Kramer licensed under CC BY-SA 3.0

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AG Kokott provides insights on distinctive character of geographical collective trade marks and their interplay with GIs

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Earlier this month, Advocate General (AG) Kokott handed down her Opinion in T-766/18 P, providing some indications regarding the distinctive character of collective and geographical collective trade marks and their interplay with geographical indications (GIs).

Background

On 17 July 2014, the Commission received the official application for the registration of the names ‘Χαλλουμι’ (Halloumi)/‘Hellim’ as a Protected Designation of Origin (PDO) under the Quality Regulation (EU) No 1151/2012. The procedure for establishing a PDO has not yet been concluded. Cyprus and other bodies, such as the Foundation for the protection of the Traditional Cheese of Cyprus named Halloumi (hereinafter, the Foundation), not having yet obtained the PDO have tried to prevent the use of the designation Halloumi registering it as a trade mark.

In the context of the opposition against the registration of the colour figurative mark BBQLOUMI, the European Union Intellectual Property office (EUIPO) and the General Court (GC) have held that the HALLOUMI trademark has a low distinctive character. Hence the opposition was rejected both before the EUIPO and the GC.

The trade mark opposed

Analysis

In the appeal procedure before the Court of Justice of the European Union (CJEU), AG Kokott recalled that, according to the Trade Mark Regulation, it is possible to register both collective trade marks and, as an exception to article 7(1)(c), geographical collective trade marks. In particular the first and second paragraph of article 66 of the Regulation state:

1. A Community collective mark shall be a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law, may apply for Community collective marks.
2. In derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1. A collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.

Collective mark

AG Kokott recalled the essential function of a collective mark, that is to guarantee the collective commercial origin of goods and services. Because of the function of trade marks, the registration of a collective mark, just like the registration of other marks, presupposes its distinctive character. At the same time, the simple fact that a collective mark has been registered does not allow to presume that a collective mark enjoys particular distinctive character.

Geographical collective mark

According to the AG, it is more difficult to answer to the question whether the distinctive character of geographical marks should also be assessed according to general criteria.

She recalled the DARJEELING case (C‑673/15 P to C‑676/15 P (DARJEELING being the name of a city and a district in India and a well-known black tea which is grown there) as the most important judgment concerning geographical collective marks so far. Even if the AG considered that the Foundation’s claim regarding the geographical collective mark would be inadmissible, she analysesd the substance of Article 66(2) of the Regulation:

The AG described the provision as being a “foreign body” in trade mark law because the regulation intends to keep descriptive terms free. Morevoer recalled that the consumer considers descriptive terms as a description of the characteristics of the products and not as the indication of its origin while geographical indication may be perceived as indication of geographic origin or a descriptions related to a particular place.

The AG underlined that geographical collective marks exclusively guarantee a particular geographical origin of the goods or services concerned and they cannot be considered as having increased distinctive character as a matter of course. Otherwise, the distinctive character would remain notional as the public would still not perceive the geographical indication as an indication of the collective commercial origin of the product.

Geographical collective trade marks, PDOs and protected GIs

According to the AG, the HALLOUMI mark gives rise to the identification of the goods or services concerned at most to a low degree. This consideration is not affected by the risk of limiting the effectiveness of Article 66(2) of the Regulation and the protection of geographical collective marks as the proprietors of a geographical collective mark still enjoy minimum protection. The AG also noted that the proprietor can influence the perception of the mark if they use it in such a way that it acquires distinctive character.

The protection given to this kind of trade marks does not need to be more extensive as the rules governing protected designations of origin and protected geographical indications can provide sufficient protection outside the scope of trade mark law. Under Article 12(1) of Regulation No 1151/2012 PDOs and protected GIs may be used by any operator marketing a product conforming to the corresponding specification without the need of being member of an association.

Comment

The Opinion defines the function of geographical collective trade marks and the assessment of their distinctive character. At the same time, in light of the presence of legislation regarding PDOs and protected GIs, it limits the scope of protection of these trade marks somehow trying to avoid the use of the trade marks system to cope for the lack of a protected designation of origin. Let's now see what the CJEU thinks.

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Beijing IP Court: Moutai is excellent, but not exclusively so

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Kweichow Moutai (or Guizhou Maotai) is probably the most famous liquor in China. As early as 1915, it was awarded a silver medal in the Panama Expo, and it is frequently served at diplomatic and other important national occasions. Many consider Kweichow Moutai the national liquor of China. So does Kweichow Moutai itself.

Over the past two decades, Kweichow Moutai Co. Ltd. (KMCL) has made several attempts to seek trade mark protection for ‘国酒茅台 (the national liquor Moutai)’ and ‘茅台国宴 (Moutai state banquet)’.

Some facts

- ‘Kweichow’ is the province in which Moutai is produced. Like champagne or Bordeaux wine, also ‘Kweichow Moutai’ is a geographical indication. Specifically, while all the liquor produced in Moutai Town in the Kweichow Province may be called ‘Kweichow Moutai Town Liquor’, only that which is made by KMCL carries the exact name ‘Kweichow Moutai’.

- Moutai liquor can only be produced within a narrow valley of less than 10 km² along the Chishui River in Moutai Town of Kweichow Province, because of its irreplaceable terroir.

- Many call Moutai ‘the creator’s grace’. Grace, like many others, is often rare. Combined with the special manufacturing process, Kweichow Moutai has very limited production.

- There is some historically traceable evidence that supports Kweichow Moutai’s claim of being the national liquor. For instance, as the then-Prime Minister Chou Enlai explained to former President Richard Nixon during a banquet that, ‘during the Long March, Moutai was used by us to cure all kinds of diseases and wounds’, with Nixon then proposing a toast to the ‘panacea’. (source: washingtonian)

The ‘national liquor’?

In 2001, KMCL began filing trade mark applications for ‘national liquor Moutai’ in class 33 for products of alcoholic beverages. However, most of those did not survive preliminary examination. In 2012, four applications for ‘national liquor Moutai’ (in Chinese, application numbers 8377491, 8377533, 8377511 and 8377467) did successfully pass the initial stage but faced 95 oppositions, the majority of which filed by the company’s own competitors.

These four temporary victories came as a surprise: according to ‘The Examination and Trial Standards for the Trade Marks containing “China” or starting with “National”’ (full text available here, in Chinese, Google translatable) issued in 2010 by the State Administration for Industry and Commerce (now the State Administration for Market Regulation), applications containing these words would be rejected due to deceptive and exaggerated advertising, lack of distinctiveness, or adverse effects.

In December 2016, the Trade Mark Office rejected the four applications, and no further details were made available. Eventually, on 13 August 2018, a statement appeared on KMLC’s official website stating it ‘sincerely apologise[s] to the Trade Mark Office and all relevant stakeholders’. The company also stopped using ‘the national liquor Moutai’.

Or ‘the liquor for state banquet’?

On 11 October 2002, KMCL filed a trade mark application for ‘茅台国宴 (Moutai state banquet)’ (filing no 3333017, in class 33), which was rejected by the Trade Mark Review and Adjudication Board (TRAB, terminated on 18 February 2019 by means of Notice No. 295 of the National IP Administration due to institutional integration). In 2016, KMCL sued TRAB in the Beijing IP Court (‘the Court’).

On 18 September 2019, the Court’s ruling ([2016] Beijing 73, First Instance Administrative Judgment No. 6389) was published (Chinese text available here, Google translatable), dismissing KMCL’s claims for the following reasons:

(1) Although the evidences submitted by KMCL proved that Kweichow Moutai had been used at national banquets for many times and has a high reputation, “Moutai state banquet” should not be registered as a trade mark for alcoholic products, as it would be easy for the relevant public to regard the relevant products as being dedicated to the state banquet, and thus misidentify its quality, grade and other characteristics.

(2) The registration of a trade mark containing “national banquet” for alcoholic goods would confer exclusive trade mark rights to its proprietor, which would not only be unfair to other players within the industry, but would also have certain negative impact on the public interest.

Therefore, to avoid the proliferation of trade marks containing the word ‘national’ and maintain fairness within the market, the Court upheld the TRAB’s findings on KMCL’s violations of Article 10.1(7) and (8) of the Chinese Trade Mark Law:

Article 10: None of the following signs may be used as trade marks:
…
(7) Those that are deceptive and likely to mislead the public in terms of the quality, place of production or other characteristics of the goods; and
(8) Those detrimental to socialist ethics or customs, or having other unwholesome influences.
...

The first judgment has come into effect, as neither party appealed.

Comment

The motivation for these ‘national-’ trade mark applications is of course elusive: it may be out of (over) confidence, intentional pre-emption, or event marketing. Nevertheless, the reasons for the two decades of failure are quite clear:

(1) A trade mark is an exclusive right, whereas ‘liquor for state banquet’ is not. In China, several liquors have been served at state banquets, e.g. Yanghe, Gujing Gong, Fen and Changyu. A trade mark registration for ‘liquor for state banquet’ or ‘national liquor’ not only seeks to monopolise the honourable title, but more seriously, might lead to the wrong assumption that Kweichow Moutai is the one and only national-level excellent liquor, which is far from truth.

(2) A simple scan shows that Kweichow Moutai produces several products, e.g. aged Moutai (80 year, 50 year, and 30 year), regular Moutai and low-alcohol Moutai, yet only the one in the ‘soy sauce coloured bottle’ is eligible to be served at state banquets. In other words, a trade mark registration for ‘national liquor Moutai’ or ‘Moutai state banquet’ in class 33 would grant an excessively large umbrella for one specific product.

All in all, the terms ‘the national liquor’ and ‘liquor for state banquet’, rather than referring exclusively to one specific liquor, should (and actually do) represent a collection of several good liquors. And, of course, the question of what the national liquor or liquor for state banquets demands in terms of qualification or standards remains difficult to answer.

Photo: Shelly, Tian's kitten.

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Nexus

Never Too Late: if you missed the IPKat last week

Never Too Late: if you missed the IPKat last week

Another "Glen", another GI Violation– Hamburg Court considers "Glen Els" an Evocation of "Scotch Whisky"

A Word on Survey Evidence

AG Kokott provides insights on distinctive character of geographical collective trade marks and their interplay with GIs

Beijing IP Court: Moutai is excellent, but not exclusively so

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