Distinctiveness of foreign mark should be assessed based on relevant public's general knowledge

The Beijing higher court has held that the distinctiveness of a trademark consisting of foreign words should be assessed on the basis of the general knowledge of the relevant public in China.

Chroma Riche is one of L’Oréal's hair care brands. On June 20 2007 L’Oréal filed an application for the registration of the trademark CHROMA RICHE in France, covering “shampoos; hair spray; hair dyes and bleaching products; essential oils” in Class 3 of the Nice Classification. The registration was granted on November 23 2007. On February 14 2008 L’Oréal filed an application to extend protection of the mark to China.

On October 29 2008 the application was rejected by the China Trademark Office on the grounds that the mark directly described the characteristics of the designated goods. On January 4 2011 L’Oréal appealed to the Trademark Review and Adjudication Board (TRAB), which upheld the Trademark Office’s refusal, holding that the mark described the characteristics of the designated goods and was devoid of distinctiveness in overall appearance (Articles 11(1)(2) and 28 of the Chinese Trademark Law).

On August 10 2011 L’Oréal appealed to the Beijing Number 1 Intermediate Court. The court overruled the TRAB’s decision on the following grounds:

1. The word 'chroma' is an uncommon professional term meaning “colour scale; chromaticity; colour saturation, etc”, which is quite different from the interpretation given by the TRAB (ie, “colour saturation”).
2. Since the word 'riche' is a French word, the Chinese average customer, who is not familiar with the French language, was unlikely to understand the meaning of the trademark CHROMA RICHE.
3. The dictionary definition of the words 'riche' and 'chroma' in combination was different from the interpretation of the TRAB. Therefore, the trademark applied for, when used on “shampoos; hair dyes and bleaching products”, was unlikely to be perceived by the relevant public as being descriptive of the designated goods to the point that it could not function as a source identifier of the goods.

The TRAB later appealed to the Beijing Higher Court, which maintained the first instance judgment.

The Higher Court declared that the courts, when adjudicating cases concerning the validity of a trademark consisting of foreign words in administrative proceedings, should base their findings regarding the distinctiveness of the mark on the general knowledge of the relevant public in China.

The court further held that, where the foreign words can function as a source identifier among the relevant public, the trademark should be held to be distinctive.

It is interesting to note that L’Oréal’s argument that the trademark had been registered in the United States and the European Union - which proved that, if it was considered to be distinctive for native speakers of English and French, it was all the more distinctive for non-native speakers in China - was overruled by the TRAB, but was never directly addressed by the court.

Li Yunquan, Wan Hui Da Law Firm & Intellectual Property Agency, Beijing

Wan Hui Da represented L’Oréal in this case