1. Where an applicant for international registration of a trademark has completed the procedures for international registration of the trademark applied for as provided in the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, and the international registration information on the trademark applied for records that the designated type of the trademark applied for is a three-dimensional trademark, it should be deemed that the applicant has made a statement that the trademark applied for is a three-dimensional mark. Since an applicant granted international registration of a trademark is not required to file a separate application for registration with any designated country, the information on the trademark applied for as transmitted by the International Bureau to the Trademark Office of China should be the factual basis for the Trademark Office of China to examine and decide a request for designation of China for the territorial extension of protection of the trademark.

2. Where the international registration information on the trademark applied is only lack of some views and other form elements as prescribed in the Regulation on the Implementation of the Trademark Law of the People's Republic of China, the trademark administration should, in the spirit of actively performing its obligations under international conventions, give the applicant a reasonable chance to submit supplements.

Articles 13 and 52 of the Regulation on the Implementation of the Trademark Law of the People's Republic of China

The disputed trademark applied for was an internationally registered trademark (No. 1221382), with Parfums Christian Dior (hereinafter referred to as “Dior”) as the applicant. The country of origin of the trademark applied for was France, the date of granting registration was April 16, 2014, the date of international registration was August 8, 2014, the international registration owner was Dior, and the commodities on which the trademark applied for was designated to be used included perfumes and eau de parfums.

After the international registration of the trademark applied for, in accordance with the relevant provisions of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as the “Madrid Agreement and the Protocol”), through the International Bureau of the World Intellectual Property Organization (hereinafter referred to as the “International Bureau”), Dior requested territorial extension of protection in Australia, Denmark, Finland, the U.K., and China. On July 13, 2015, the Trademark Office of the State Administration for Industry and Commerce issued a notification of refusal regarding the trademark applied for to the International Bureau to refuse the request for territorial extension of protection of all the designated commodities in China on the grounds that the trademark applied for lacked distinctiveness. During the statutory period, Dior filed a review application with the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the “TRAB”). The TRAB held that the trademark applied for could hardly play a role in differentiating commodities and lacked the required distinctiveness of a trademark. In its No. 13584 decision, TRAB refused the request for territorial extension of protection of the trademark in China. Dior filed an administrative lawsuit against the decision, alleging that: First, the trademark applied for was a three-dimensional trademark with designated colors. Dior had submitted to the TRAB the views of three sides of the trademark, but the TRAB reviewed the trademark as a conventional one. The factual basis for the TRAB to make the aforesaid decision was erroneous. Second, the trademark had a unique design and after longtime publicity and promotion by Dior, had gained strong distinctiveness. Its request for territorial extension of protection of the trademark should be supported.

On September 29, 2016, the Beijing Intellectual Property Court entered an administrative judgment (No. 3047 [2016], Original, Administrative Division, 73, Intellectual Property Court, Beijing) to dismiss Dior's claims. Dior appealed against the original judgment. On May 23, 2017, the Higher People's Court of Beijing Municipality entered an administrative judgment (No. 744 [2017], Final, Administrative Division, HPC, Beijing) to dismiss the appeal and uphold the original judgment. Dior filed a petition against the appellate judgment for retrial with the Supreme People's Court. On December 29, 2017, the Supreme People's Court entered an administrative ruling (No. 7969 [2017], Administrative Division, Petition, SPC) to directly review the case, and on April 26, 2018, entered a judgment (No. 26 [2018], Administrative Division, Retrial, SPC) to revoke the original and appellate judgments and the disputed decision and order the TRAB to make a review decision anew.

In the opinion of the Supreme People's Court, the international registration information on the trademark applied for clearly recorded that the designated type of the trademark applied for was a “three-dimensional mark,” with a specific description of the three-dimensional form. In the absence of contrary evidence, the record on the specific type of trademark in the international registration information on the trademark applied for should be deemed a form of statement of the applicant that the trademark applied for was a three-dimensional mark. It may also be reasonably presumed that in the process of designation of China for the territorial extension of protection of the trademark applied for, the application information transmitted by the International Bureau to the Trademark Office of China was identical with the international registration information and the Trademark Office of China should be aware of the above information. Since an applicant granted international registration of a trademark was not required to file a separate application for registration with any designated country, the information on the trademark applied for as transmitted by the International Bureau to the Trademark Office of China should be the factual basis for the Trademark Office of China to examine and decide a request for designation of China for the territorial extension of protection of the trademark. Based on the evidence presented, the type of trademark for registration in China in the request was a “three-dimensional mark,” rather than a “conventional trademark” recorded in the archives of the Trademark Office of China as the basis for the Trademark Office's examination and the TRAB's review. In the review process, Dior made it clear that the specific type of the trademark applied for was a three-dimensional mark, and requested supplementation by adding three views of the trademark. However, the TRAB neither accurately recorded these in its Decision No. 13584 nor verified whether the facts for the Trademark Office to decide to refuse the request were erroneous in respect of Dior's above claim. Instead, the TRAB still reviewed the trademark applied for as a “figurative mark” and simply dismissed Dior's review application, which violated the legal procedure, may cause damage to the legitimate interests of the party subject to administration, and should be corrected. The Trademark Office and the TRAB should examine or review anew whether the trademark applied for had distinctive features as a three-dimensional trademark.

The Madrid Agreement Concerning the International Registration of Marks and its Protocol were primarily developed to create an international cooperation mechanism that establishes and improves procedures for the international registration of trademarks, streamlines and simplifies registration procedures, and facilitates trademark protection as needed in a country at the lowest possible cost for applicants. The facts of this case show that the trademark applied for was the subject of an application for Madrid international registration with China designated, so that the relevant request materials should be consistent with the information transmitted by the International Bureau to the Trademark Office. It may be reasonably presumed from the existing evidence that Dior had made a statement in the international registration application procedure on the fact that the trademark applied for was a three-dimensional mark, indicated the specific use of the trademark applied for, and submitted a drawing of one side of the trademark applied for. Where the request materials lacked only some views and other form elements of the three-dimensional mark as prescribed in the Regulation on the Implementation of the Trademark Law of the People's Republic of China, the trademark administration should, in the spirit of actively performing its obligations under international conventions, give the applicant a reasonable chance to submit supplements. In this case, the Trademark Office neither accurately recorded Dior's statement made in the international registration procedure on trademark type, nor gave Dior a reasonable chance to submit supplements. In the absence of the party's request and any factual basis, the Trademark Office directly changed the type of the trademark applied for into a conventional figurative mark and reached a conclusion to Dior's disadvantage. The TRAB's failure to correct it also lacked factual and legal basis, may cause damage to the reasonable expectation interest of the party subject to administration, and should be corrected.

To conclude, the TRAB should, based on the grounds of Dior regarding trademark type in the review procedure, correct the Trademark Office's improper determination, and review and decide the request for designation of China for territorial extension of protection of the trademark applied for according to the criteria for assessing the distinctive features of a three-dimensional trademark. In examining or reviewing the request anew, the Trademark Office and the TRAB should focus on the following factors: (1) the distinctiveness of the trademark applied for and its distinctiveness derived from use, particularly the time when the trademark applied for entered the Chinese market, its actual use, publicity, and promotion provable by evidence, and the resulting possibility of distinguishing the source and functions of goods by the trademark applied for; and (2) the principle of consistency in review criteria, that is, although trademark review and judicial review procedures necessarily consider the particular circumstances of individual cases, the basis for review should be the provisions of the Trademark Law of the People's Republic of China and the relevant administrative regulations, and review of individual cases should never be an excuse for overlooking the consistency of law enforcement standards.

(Judges of the effective judgment: Tao Kaiyuan, Wang Chuang, and Tong Shu)