According to the (2020) Jing Xing Zhong No. 4528 Judgment issued by the Beijing Higher People’s Court that on December 16, Van Cleef & Arpels applied for the registration of the trademark No. 15736970 in November 2014, which is three-dimensional graphics composed of four-leaf clover patterns, the approved commodities including jewelry, gems, necklace jewelry, etc.

In July 2019, the Trademark Review and Adjudication Board ruled that the trademark constitutes the situation stipulated in Article 11 of the 2013 Trademark Law, that is, the trademark which only has generic name, graphics, model of the product, or signs lack of distinctive features shall not be registered as a trademark. Moreover, the evidence submitted by Van Cleef & Arpels was not sufficient to prove that the trademark in dispute has acquired distinctive features through use, so the trademark in dispute was declared invalid.

Van Cleef & Arpels refused to accept the ruling and sued to the Beijing Intellectual Property Court. However, the Beijing Intellectual Property Court rejected Van Cleef & Arpels' claims in the first instance judgment.

The Beijing Intellectual Property Court held in the first instance that the disputed trademark was a three-dimensional figure composed of a four-leaf clover pattern. Although it has certain characteristics in the combination of shapes and decoration compound mode, however, as it is used in jewelry, according to the recognition ability of ordinary consumers, it is easy to recognize it as the product shape and model identification, and it is not easy to distinguish the source of the product.

It believes that even if Van Cleef & Arpels claims that the shape is not a usual design, however, in the relevant public’s perception, the first reflection would be the difference in external design, that is, it is easier to regard it as the main body or component of the product, rather than consider it as a trademark. The inherent distinctiveness of the disputed trademark will not be affected by whether it is an original creation or not.

The Court of first instance also mentioned that although the evidence provided by Van Cleef & Arpels can prove that the Clover Alhambra series is widely sold in the Chinese market, it cannot prove that the disputed trademark has been used as trademark in mainland China.

Van Cleef & Arpels still refused to accept this and appealed to Beijing Higher People’s Court.

It mentioned in the grounds of appeal that the disputed trademark has a concise and recognizable design feature, which can enable the relevant public to distinguish the source of the goods. It cannot be denied that the disputed trademark is a three-dimensional mark embodied in the shape of the product itself. At the same time, after long-term continuous use and publicity, the disputed trademark has been protected by judicial and administrative protection in China many times, and has an extremely high reputation and recognition. Therefore, it should be determined that the disputed trademark has been used to strengthen its distinctive features.

The Beijing High People’s Court stated in the second-instance judgment that Article 9 of the "Regulations of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases for Trademark Authorization and Confirmation" stipulates that only the shape of the product itself or a part of its shape shall be used as a three-dimensional mark to apply for trademark registration. If it is not easy for the relevant public to recognize it as a mark indicating the source of goods, the three-dimensional mark does not have the distinctive features of being a trademark. This shape is the original creation of the applicant or the earliest use which does not definitely lead to its distinctive features as a trademark.

Therefore, to determine whether a trademark is distinctive, it should be judged from three points, namely: the degree of association between the mark itself and the designated goods. The judgment subject should be based on the general cognition level and cognitive ability of the relevant public in the specific product or service field. The judgment standard should be based on the integrity of the logo.

In this case, although the overall appearance effect of the disputed trademark is somewhat original, it is used on jewelry and other commodities. According to relevant public perception habits, it is easy to recognize the appearance, shape or decoration of the commodity for recognition and identify the source of the commodity. The function is weak, which constitutes the situation of Article 11 of the 2013 Trademark Law.

The Court of second instance also mentioned that although the judgment subject of the first instance was improperly defined as a "general consumer", the conclusion in this part was correct, and the High Court confirmed it.

In addition, the Court of second instance held that a large number of operators in the jewellery field have used "four-leaf clover" as the decorative appearance of related products, which has led to more public recognition of the product's exterior decoration effect, which has diluted the disputed trademark instructions awareness of the origin of the product.

At the same time, Van Cleef & Arpels did not clarify the scope of its trademark prohibition rights. In order to avoid negative impacts on the legitimate operations of other operators in the relevant market, the original judgment stated that the existing evidence was insufficient to prove that the disputed trademark passed through Van Cleef & Arpel's use of the identification of distinctive features is not improper.

The Beijing High People's Court finally ruled that Van Cleef & Arpels' appeals lacked factual and legal basis, and the Higher People's Court did not support it. The appeal was rejected, and the original verdict was upheld.

Source: China IP Today