News

Recently, JAVY law firm attorney Siping Yang successfully represented a Russian company in a trademark refusal review case. The case not only safeguarded the legitimate rights and interests of the client, but also cleared the obstacles for its trademark registration in the Chinese market, which demonstrated JAVY's profound strength and outstanding achievements in the field of intellectual property rights.

Case Details

A Russian client applied for registration of the trademark “** SYSTEMS” in China, which is related to automotive chemicals. However, the State Intellectual Property Office (hereinafter referred to as the “State Intellectual Property Office”) rejected the registration of the trademark on the ground of relative refusal, citing 10 prior similar trademarks that had been applied for and registered. At the same time, the State Intellectual Property Office (“SIPO”) considered that the mark lacked distinctive features in the designated goods, which constituted a ground for absolute refusal.

After receiving the notification of trademark refusal from the State Intellectual Property Office, Ms. Yang Siping analyzed that the client's chances of reexamination were slim in the face of the numerous prior obstacle marks and the absolute grounds of refusal for lack of distinctiveness. Therefore, she advised the client to give up the reexamination, revise the trademark design and apply for registration again.

The client submitted another application after modifying the trademark, but the State Intellectual Property Office still rejected the application on the grounds that there were eight similar prior registered trademarks and that the trademark only consisted of commonly used trade terms and lacked the recognition and distinctiveness that should be required of a trademark.

Ms. Yang advised the client to abandon some of the non-core goods and retain only the key goods, thus successfully overcoming six of the eight obstacle trademarks and helping the client to revoke the other two trademarks. At the same time, Ms. Yang wrote a strong argument to prove that the trademark was not a commonly used commercial term and had the necessary identifying and distinctive features to qualify for trademark registration. In addition, Ms. Yang also explained the importance of registering the trademark in China from political, economic and legal perspectives. In the end, she successfully persuaded the State Intellectual Property Office (SIPO) to overcome the relative and absolute grounds of refusal, and cleared the way for the client to register the trademark in China.