Colour combinations have been registrable as marks since the Trademark Law was amended in 2001. However, in practice, this has been difficult, as examiners often opt for the easy solution of refusing such marks on account of their lack of distinctiveness. The Beijing IP Court case involving Andreas Stihl AG & Co KG's orange and grey abstract colour combination trademark illustrates the difficulties in this regard and showcases how to register a colour combination trademark in China.
General Mills Asia, owner of the trademark WANCHAI FERRY (in Chinese characters), recently obtained a victory against a trademark squatter before the Beijing Higher Court. The court affirmed the well-known status of the cited trademark and adopted the dilution theory to reject the bad-faith applications of the opposed trademarks.
A trademark application can be filed directly with the China Trademark Office (CTMO) or extended to China via the Madrid System for the International Registration of Marks. While both options have their pros and cons, applications filed with the CTMO seem to have a slight advantage overall, particularly regarding application amendments, examination times, trademark enforcement and the extension of a trademark to similar products and services.
The Trademark Review and Adjudication Board has ruled that STIHL's orange and grey colour combination mark is registrable in China, since it has acquired distinctiveness through long-term, extensive use. The case demonstrates the arduous task faced by applicants in proving that colour combinations have acquired secondary meaning through extensive use and advertisement.
The Beijing High Court has confirmed that a single, symbolic use of a trademark for the mere purpose of maintaining its registration cannot protect the mark against cancellation. The case concerned an individual who had filed more than 50 trademarks that were either identical or similar to well-known third-party trademarks.
General Mills recently obtained a victory against a trademark squatter before the Trademark Review and Adjudication Board, which affirmed the well-known status of the Chinese translation of 'Häagen-Dazs' and rejected the bad-faith application of the mark HÖOGEN-DAZS. It seems that the board is strengthening the protection of well-known trademarks and intensifying efforts to prevent trademark squatting.