Administrative Judgment — UDZ Technology (Beijing) Co., Ltd.; review of trademark-application refusal

Administrative Judgment

Plaintiff: UDZ Technology (Beijing) Co., Ltd., domiciled at Room 2953, 29th Floor, Block C, No. Jia 6 Jianguomenwai Avenue, Chaoyang District, Beijing.

Legal representative: Yifeng Zhang, manager. (Did not attend the hearing.)

Authorized representative: Liu*, lawyer at Hebei Shengyu Law Firm. (Attended the hearing.)

Defendant: Trademark Review and Adjudication Board of the State Administration for Industry and Commerce, domiciled at No. 1 Chama South Street, Xicheng District, Beijing.

Legal representative: Zhao Gang, director. (Did not attend the hearing.)

Authorized representative: Tian**, examiner of the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce. (Attended the hearing.)

Cause of action: administrative dispute over review of the refusal of a trademark application.

Challenged decision: Shang Ping Zi [2016] No. 12873, Decision on Review of Refusal of Trademark No. 15757806, “优定制及图” (“优定制” and device).

Date of the challenged decision: 17 February 2016.

Date of hearing: 19 May 2016.

The defendant issued the challenged decision on the ground that trademark No. 15757806, “优定制及图” (“优定制” and device), applied for by the plaintiff (the “disputed trademark”), lacked the distinctive characteristics a trademark should possess and therefore fell within Article 11, paragraph 1, item (2), of the Trademark Law of the People’s Republic of China (the “Trademark Law”). It refused the registration application for the disputed trademark in respect of the goods under review.

The plaintiff alleged: First, the disputed trademark, “优定制及图,” has a special meaning, expressing the concept of the plaintiff’s UDZ.COM business. Second, through use, the disputed trademark has acquired recognition and a particular meaning in the market, becoming a sign by which the relevant consumers identify UDZ.COM, and it may therefore be registered as a trademark. On these grounds, the plaintiff requested revocation of the challenged decision.

The defendant argued that the challenged decision clearly established the facts, correctly applied the law, and followed lawful procedure, and asked the Court to dismiss the plaintiff’s claims.

Having heard the case, this Court finds as follows:

I.

The disputed trademark

1. Applicant: the plaintiff.

2. Application No.: 15757806. 3. Application date: 21 November 2014.

4. Sign

5.

Designated goods (Class 25, Groups 2501–2505 and 2507–2512): work clothes; ready-made clothing; clothing; baby trousers (clothing); shoes (footwear); hats; socks; gloves (clothing); neckties; scarves; suit pocket squares; belts.

II. Other facts

During these proceedings, the plaintiff submitted three items of evidence to the Court, primarily to establish that the disputed trademark had acquired a degree of recognition through use and possessed the distinctiveness required for trademark registration.

The foregoing facts are supported in the record by the file for the disputed trademark, the notice of trademark refusal, the application for review of refusal, the evidence submitted by the parties, the hearing record, and other materials.

This Court considers as follows:

The issue in this case is whether the disputed trademark contravenes Article 11, paragraph 1, item (2), of the Trademark Law.

Article 11, paragraph 1, item (2), of the Trademark Law provides that signs which merely directly indicate the quality, principal raw materials, function, purpose, weight, quantity, or other characteristics of goods shall not be registered as trademarks.

The disputed trademark consists of the Chinese characters “优定制.” “定制” means “making a particular thing according to a customer’s specific requirements” and, in relation to goods such as “clothing,” has the meaning “tailoring for an individual customer.” Thus, “定制” directly indicates a characteristic of the manufacture of “clothing.” The Chinese character “优” means “fine” or “outstanding”; combining it with “定制” to form the trademark does not confer the distinctiveness required for registration. Accordingly, the disputed trademark, “优定制,” directly indicates a characteristic of the manufacture of “clothing,” lacks distinctiveness, and is a sign that may not be registered as a trademark under Article 11, paragraph 1, item (2), of the Trademark Law.

The plaintiff contends that the disputed trademark has attained a high level of recognition through use and has acquired distinctiveness through use. However, the evidence it submitted is insufficient to show that, through use in relation to the designated goods, the disputed trademark has acquired the distinctiveness required for registration. The plaintiff’s contention cannot be sustained, and this Court does not uphold it.

In conclusion, neither the plaintiff’s claims nor its grounds can be sustained, and this Court does not uphold them. The challenged decision clearly establishes the facts and correctly applies the law. Pursuant to Article 69 of the Administrative Litigation Law of the People’s Republic of China, this Court gives judgment as follows:

The claims of the plaintiff, UDZ Technology (Beijing) Co., Ltd., are dismissed.

The case acceptance fee of RMB 50 shall be borne by the plaintiff, UDZ Technology (Beijing) Co., Ltd. (Already paid.)

If either party is dissatisfied with this judgment, it may, within fifteen days from the date of service of this judgment, submit a notice of appeal and copies to this Court and pay an appeal case acceptance fee of RMB 100, appealing to the Beijing High People’s Court.

30 May 2016