Beijing Higher People's Court considers registrability of geographic names

An application filed with the Chinese Trademark Office on July 3 2008 by Techtronic Industries Co Ltd (later assigned to Milwaukee Electric Tool Corporation (METCO)) to register the mark MILWAUKEE in Class 9 of the Nice Classification was finally cleared for acceptance on February 20 2013 following appeals by METCO to the Trademark Review and Adjudication Board (TRAB) and the Beijing First Intermediate People’s Court, and a final appeal by the TRAB to the Beijing Higher People’s Court.

On March 26 2010, upon examination, the Trademark Office refused the following mark for registration in accordance with Article 10(2) of the Chinese Trademark Law as being a city of the United States well known to the public.

METCO appealed the refusal to the TRAB on the basis that:

• 'Milwaukee' is not a place well known to the Chinese public; and
• the mark had become distinctive through its use by METCO in China.   

The TRAB issued its decision on September 26 2011 in favour of the Trademark Office. The TRAB noted that the stylisation of the mark was not sufficient to render the mark overall distinctive and found that the mark had not acquired distinctiveness through its use in China. 

METCO further appealed the refusal to the Beijing First Intermediate People’s Court. At the hearing, it was argued on behalf of METCO that 'Milwaukee' is not a geographic name well known to the Chinese public and that the mark is overall distinctive. The TRAB failed to submit any evidence to support its view that 'Milwaukee' is a place well known in China and the court therefore issued its decision to allow the mark for registration as the TRAB had failed to substantiate its objection.  

The TRAB then filed an appeal to the Beijing Higher People’s Court against the decision at first instance. In upholding the decision at first instance, the Beijing Higher People’s Court considered Article 10(2) of the Trademark Law, which prohibits the use of a mark which consists of the name of a foreign place which is well known to the public, except if the name has acquired a secondary meaning, or the name is an element in a collective mark or a certification mark. In its decision, the court commented as follows:

• “Well known to the public” means that it is well known to the Chinese public. 
• It is necessary to consider in which language the name is well known to the Chinese public - that is, whether the foreign or Chinese translation is well known to the Chinese public. If the Chinese translation is well known to the Chinese public but the foreign name is not, the name in the foreign language should not be prohibited from use and registration. 
• Further, if the name of a place is well know to the Chinese public, but it is unlikely to cause any confusion, it should not be prohibited from use and registration. 
• The evidence submitted by the TRAB (including internet search results and extracts of the relevant entry in an authentic English-Chinese dictionary) showed that the Chinese translation of Milwaukee is '密尔沃基' and that '密尔沃基' is a US city in Wisconsin which is “a name of a foreign place”. However, this did not prove that the foreign name 'Milwaukee' is well known to the Chinese public.   

Sandra Gibbons, Marks & Clerk Hong Kong, Hong Kong