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Spotlight on UK patent appeal practice - court focuses on issues

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					issue 183
July 2005



Beijing High Court provides guidance on
trade mark registrability
In two recent decisions, China’s final     registrability of country names
court of appeal, the Beijing High
Court, provided guidance on the            ChinaStar Trade Mark Co. Ltd’s
registrability of laudatory expressions    application to register the mark
and country names and the use of           CHINASTAR was rejected because of
disclaimers.                               its similarity to (i) ‘People’s Republic
                                           of China’ and (ii) the previously
laudatory expressions and use of           registered trade mark STAR.
disclaimers
                                           TRAB initially held that the mark was
Wan Lao Ji Co. Ltd’s (WLJ) application     deceptively similar to STAR, but not
to     register   a    device    mark      to ‘People’s Republic of China’. It
incorporating the words BEST DRINK         subsequently reissued its decision,
in relation to beverages was rejected      holding this time that the mark was
on the ground that BEST DRINK              also deceptively similar to the country
‘exaggerates and deceives consumers        name. ChinaStar appealed, first to
regarding the quality of the product’.     the Beijing No. 1 Intermediate Court
                                           and then to the High Court.
WLJ appealed, unsuccessfully, to both
the    Trade     Mark    Review     and    The Beijing High Court held that:
Adjudication Board (TRAB) and the
Beijing No. 1 Intermediate Court,          ●   marks that incorporate a country
offering to disclaim exclusive rights to       name will not be registrable
BEST DRINK. The Court held that                unless the applicant can show that
‘best’ was deceptive and could not             the   mark     has    acquired   a
function as a trade mark.           WLJ        secondary meaning; and
appealed to the Beijing High Court.
                                           ●   TRAB can correct its mistakes to               phone: +44 (0)207 345 8888
The High Court’s decision clarifies two        maintain consistency, so long as
                                                                                              email: rouse@iprights.com
                                                                                              fax: +44 (0)207 345 4555
important points:                              the correction does not affect an              web: www.iprights.com
                                               applicant’s right to appeal. The
●   A word or phrase that may                  deadline for appeal will be
    mislead as to the type, quality or         calculated from the date of the
    function of goods is unregistrable         reissued decision.
    - even with a disclaimer. Use of
    the word ‘best’ is not permitted       our comment
    because of its ability to deceive.
    Although BEST DRINK appeared in        These decisions clarify a number of
    small letters and was not a            important trade mark issues and will
    dominant part of the overall mark,     assist many seeking trade mark
                                                                                              London E14 9SG
                                                                                              The Isis Building


                                                                                              United Kingdom
                                                                                              193 Marsh Wall




    its inclusion made the mark as a       registration in China.
    whole unregistrable.
                                            For further information, please phone or email
●   Disclaimers must be made during         your usual contact or email alert@iprights.com.
                                            For previous Alerts, see
    the application process.  They          http://www.iprights.com/our_publications/alerts
    cannot be made on appeal.               /index.asp

				
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Description: Spotlight on UK patent appeal practice - court focuses on issues