Administrative Judgment

of Beijing IP Court

(2019)7645

The sued decision:Dissatisfied with the decision of CNIPA (the Defendant)to refuse the registration of the proposed mark with No.26964556, GLOBAL SMM 2009 (the Plaintiff) filed a lawsuit before the Beijing IP Court. And the court accepted it according to law.

The plaintiff : 1.Designed by the plaintiff uniquely and having distinctive design concept and meaning, the proposed mark can distinguish the sources of goods or services and it should be approved of publication. 2. “SPAIN” contained in the proposed mark serves only as an indication of the country the plaintiff belongs to for it covers a smaller part of the whole mark and is located in a non-significant part. So it is a descriptive element and does not affect the overall characteristics of the trademark. And the proposed mark, as a whole, is not similar to the country name of “Spain”. And it doesn’t violate the provisions of Article 10 of Trademark Law and should be approved of registration.3.According to the consistency principle of inspection standards, the prior filed mark by the plaintiff with No.23831217 containing “SPAIN” has been registered and many other marks containing “Spain” have also been registered, so the proposed mark should be approved for publication accordingly.4.After long term use and promotion, the proposed mark has established high reputation and gained a relatively stable customer group, which can play a role in distinguishing the sources of products or services. So it should be approved of publication. In conclusion, the plaintiff kindly request the Court to cancel the sued decision and ask the CNIPA to make a new decision.

The Beijing IP Court: the Court thinks the focus of this case is whether the proposed mark violates the provisions of Article 10 of Trademark Law:those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries should not be used as trademarks, except that the foreign state government agrees otherwise on the use;

In this case, the proposed mark is a combination of English words and device, consisting of "BOTTLED ATTHE SOURCE" , "FUENSANTA", "NATURAL SPRING WATER""SINCE 1846-ASTURIAS" ,"SPAIN" and device, among which the “SPAIN” covers a smaller part. While "FUENSANTA" constitutes the distinctive identification part of the proposed trademark for it located in the middle and it is obvious and easy to be identified by the public. Although “Spain” is the country name, the plaintiff, as the applicant of the proposed mark, belongs to the kingdom of Spain.  So the Court thinks “SPAIN” is independent with other distinctive elements and serves only as an indication of the country the plaintiff belongs to. And the proposed mark, as a whole, is different from “Spain”. Where the defendant maintains that the proposed trademark has constituted a circumstance under article 10 of the trademark law and rejected the application for trademark registration of the proposed mark, it is an error of application of law. So our Court shall not support it.

Above all, the Court shall cancel the sued decision for it was made on the basis of wrong application of law.While the plaintiff's claim is valid, and it shall be supported by our Court.