BLUETOOTH not a source indicator, rules court

The Beijing First Intermediate People's Court has dismissed an administrative action filed by Bluetooth SIG Inc against a decision of the Trademark Review and Adjudication Board of China (TRAB) to refuse registration of BLUETOOTH as a trademark for computing and communications apparatus ((2004) Beijing First Intermediate Court Administrative First Instance Case 226).

Under the Trademark Law of China existing before 2001, the decision of the TRAB on registrability of a mark was final. The 2001 revision of the Trademark Law allows a party dissatisfied with a TRAB ruling to file proceedings in court to seek reversal of the decision.

Bluetooth SIG is a special interest group that, among other things, seeks to promote the Bluetooth short-range wireless specification for connecting mobile products. It brought a claim before the Beijing First Intermediate People's Court against the TRAB's decision to refuse registration of BLUETOOTH, claiming that the mark was inspired by the name of the Danish King Harald Bluetooth and does not have any dictionary meaning. It also argued that:

• BLUETOOTH, being a combination of the two English words 'blue' and 'tooth', makes no reference to wireless communication and is not descriptive;
  
  
• BLUETOOTH has been registered as a trademark in many jurisdictions and is distinctive of the applicant through long and extensive use; and
  
  
• The TRAB was wrong in deciding that BLUETOOTH lacks distinctiveness by referring to a website owned by a company in Guangzhou.

The TRAB defended the action by claiming that Bluetooth is a technical term referring to a kind of wireless communication technology. All products made in accordance with the specification of the Bluetooth technology possess the same properties, namely the support of short-range wireless transmission of voice and data, and interoperation and compatibility. When applied to computing and communications apparatus, the BLUETOOTH mark fails to distinguish between the goods of one trader from another, and therefore lacks distinctiveness.

The court agreed with Bluetooth SIG that the TRAB was wrong to refer to the content on a commercial website in determining whether BLUETOOTH lacked distinctiveness but it noted that the TRAB had also referred to other material. The term 'Bluetooth' is defined in the English-Chinese Computer Network Communication Technical Dictionary as meaning "a short-range wireless network communication specification the development of which started in May 1998 under the promotion of Ericsson, IBM, Intel, Nokia and Toshiba", and has become a global open standard for wireless communication of voice and data. The court held that the use of the term 'Bluetooth' on computing and communications apparatus is an indicator that the apparatus possesses the technical properties complying with the standard, rather than an indicator of the source of the goods.

Accordingly, the court upheld the TRAB's decision and dismissed Bluetooth SIG's action.

Rebecca Lo, Rebecca Lo & Co, Hong Kong