COOL WHITE gum application chewed up by People's Court

China

The Beijing First Intermediate People's Court has upheld the decision to refuse chewing gum manufacturer William Wrigley Jr Co's (Wrigley) application to register the mark COOL WHITE (Intermediate Administrative Case 1021, December 23 2004).

Wrigley applied to register COOL WHITE for non-medical chewing gums and candies. The Chinese Trademark Office refused registration, finding the mark to be directly descriptive of the taste and colour characteristics of the goods. Wrigley appealed to the Trademarks Review and Adjudication Board (TRAB) but it upheld the earlier decision.

Wrigley, pursuant to the Trademark Law 2002, appealed to the People's Court. It argued that COOL WHITE, when viewed overall, is distinctive as it is an unusual sequence of words in the English language. However, this argument was dismissed by the court. It agreed with the earlier finding that COOL WHITE is highly descriptive when applied to non-medical chewing gums and candies. Accordingly, it endorsed the decision to refuse registration.

The provisions of the Trademark Law that prohibit registration of descriptive marks are in accordance with global practice. Fortunately, the law also provides that notwithstanding the descriptiveness of a mark, it may still be registered if it can be shown that through use, the mark has acquired distinctiveness and serves to identify a particular trade source. In order to register its mark in the future, it seems likely that Wrigley will have to rely on substantial use of COOL WHITE in China.

Yvonne Chua and Chloe Lee, Wilkinson & Grist, Hong Kong

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