Union Pay Color Combination Trademark Registration Application Rejected by the Court

Borsam IP
China IP Today—————————————

Recently, China Securities Regulatory Commission’official website published the "Publication of CICC's Summary Report on the Guidance Work of UnionPay Business Co., Ltd.", and the guidance work of UnionPay's sci-tech innovation board was finally completed.


Before submitting the prospectus, on December 18, Beijing Higher People’s Court simultaneously issued two "UnionPay Business Co., Ltd. and China National Intellectual Property Administration Other Second-instance Administrative Judgments", shows that there are two cases of UnionPay Application for registration of the used trademark was rejected by CNIPA. UnionPay sued CNIPA to the Court and finally ended in being defeated.


The disputed trademark application numbers involved in the above cases are 31637217 and 31637218, both of which are financial property management trademark graphics. They applied for registration on June 15, 2018, and were rejected by CNIPA on September 10, 2019.


The Court of first instanceBeijing Intellectual Property Court, held that the focus of the dispute, in this case, was whether the above-mentioned trademark violated the provisions of Article 11 Paragraph 1 (3) and Article 11 Paragraph 2 of the "Trademark Law", that is, "Other marks which are lack of distinctive features" shall not be registered as a trademark", "The signs listed in the preceding paragraph may be registered as trademarks if they have acquired distinctive features through use and are easy to identify."


Beijing Intellectual Property Court held that the disputed trademark is composed of two color combinations of upper dark blue and lower light blue. The combination itself is relatively simple. It is used in services such as "debit card payment processing and real estate management". The relevant public often identifies it as color commonly used in commodities. It is difficult to act as distinguishing the source of the goods, lacked the distinctiveness that a registered trademark should have, and should not be approved for registration.


UnionPay claims that the above-mentioned trademarks have acquired distinctive features, but the Court of first instance pointed out that the evidence submitted by it contains "UnionPay" and other trademarks which are more prominent. It is not enough to prove that the disputed trademark has been used to obtain the significance of being available for registration on the reviewed goods including "computer", so the claim of UnionPay Commerce is not supported.


In addition, UnionPay claims that many color combination trademarks have been approved for registration. According to the principle of consistency of review standards, the disputed trademark should be approved for registration. However, Beijing Intellectual Property Court pointed out that the trademark authorization examination may have different conclusions due to different facts in each case. The approval of the registration of other color combination trademarks is not the natural basis for the registration of the disputed trademark in this case.


In the second instance, UnionPay submitted seven pieces of new evidence to prove its industry status and the distinctiveness of the trademark in dispute.


UnionPay believes that the original judgment only focused on the dark blue and light blue combination itself, and did not pay attention to the unified correspondence between the disputed trademark combination and the "upper" and "lower" of the equipment. When merchant operators use UnionPay commercial payment acceptance equipment, specific and consistent color combinations continue to appear through the equipment, and repeatedly reminding users that the equipment and services come from UnionPay. This color combination’color adjustment arrangement is distinctive visually. This color combination is not commonly used in the industry, and can play a role of distinguish service sources.


In addition, UnionPay pointed out that it is logically unreasonable for the original judgment to determine that the disputed trademark was used with other trademarks such as "UnionPay" and presuming that the disputed trademark was not used to gain distinctiveness. The disputed trademark has been used extensively by UnionPay for a long time and has formed a corresponding relationship with UnionPay, which has enhanced its distinctiveness through use.


However, the Court of second instance held that the evidence submitted by UnionPay Commerce could not prove that the relevant public can form a stable correspondence between the disputed trademark and UnionPay Commerce. The disputed trademark has not yet been widely used by UnionPay to acquire distinctive features and facilitate identification.


The original judgment was upheld in the second instance, and it is the final judgment.

Source: China IP Today