Affirmation on Distinctiveness of Trademark - a Winning Case Represented by Unitalen

October 21, 2017

Qu Mei Furniture Group Co. Ltd. (hereinafter referred to as “QM Group”) applied for registration of QM trademark in respect of furniture and the accessories on Feb 18, 2014. The application was rejected by the Trademark Office on the ground that the mark consists of only two English letters in plain form which is devoid of distinctive characteristics.


QM Group applied for review but Trademark Review and Adjudication Board sustained the refusal decision. In disagreement, QM Group initiated an administrative litigation with Beijing IP Court.


QM Group pleaded that the QM mark possesses distinctive characteristics and does not fall within the circumstances prescribed in Article 11-1-(3); in addition, the mark has gained remarkable publicity after long term use and propaganda, which has further increased its distinctiveness, and therefore the mark should be approved for registration in accordance with Article 11-2 of the Trademark Law. In support of the argument, QM Group submitted evidences including pictures of stores, furniture, and accessory products where QM mark is used, as well as advertisements and official websites showing the use of QM mark.


Beijing IP Court held that, despite the plaintiff’s claim of the special design, the  QM mark has minimal difference from a standard form of the composing letters, and therefore possesses low degree of distinctiveness. However, the evidences have shown that the QM mark corresponds to the Chinese 曲美 (pinyin as “Qu Mei”), and the two of them are often used together in stores, advertisements and official websites; also the evidences prove that the QM mark has been used substantially and marketed extensively. Besides, the composed mark composed of QM and 曲美 has been recognized as a well-known mark. With the unique corresponding relationship with QM Group and the Chinese曲美, the QM mark has been recognized by consumers and has been able to play the function of identifying the source of goods. Accordingly, the court revoked the refusal decision in accordance with Article 11-2.


Typical Significance


This is a typical case of trademark overcoming inherent lack of distinctiveness and obtained registration based on “acquired distinctiveness”. In accordance with Articles 5 & 6 of the Supreme Court’s Opinions on Issues Concerning the Trial of Administrative Cases Involving the Granting and Determination of Trademark Rights, “the courts shall determine the distinctive characteristics of a trademark in whole and based on the common sense of the relevant public”, and “shall determine the distinctive characteristics of a trademark in a foreign language based on the common sense of the relevant public in China”. In other words, the inherent distinctiveness of a mark is only one of the factors for deciding its registrability; how the mark is used by the trademark applicant shall be considered as an important factor too. Therefore, for marks rejected because of “lack of distinctive characteristics”, the trademark applicants can still seek registration by proving the mark has acquired distinctive characteristics through uses with sufficient evidences submitted.