The rain season is hitting
Facial recognition is a form of biometric authentication, which uses face measurements to verify your identity. We know that face recognition is largely used in
We talk then about the registrability of "retailing" and "wholesaling" as services in
In the following article we explore how Big Data can benefit from copyright protection, from computer software applied in data collection and processing to the data sets, to the outcomes generated via Big Data technologies.
The last article deals with the "Force Majeure clause" issued by the
Finally, have a look to the news of the HFG office!
Stay dry and enjoy the reading.
Apple's FACE ID trademark (finally) granted!
By
Face ID is a facial recognition system designed and developed by
On
The above trademark was preliminarily refused due to the lack of distinctiveness. The CNIPA deemed that "面容ID" could be translated as "face identification", therefore, the use on its designated goods "computer" etc. exclusively indicates the function and usage of the goods, which constitutes the scenario of Article 11.2, thus rejecting Apple's appeal [
Article 11.2 of Trademark Law: None of the following marks may be registered as trademarks: (2) Where it only directly indicates the quality, principal raw materials, function, use, weight, quantity or other features of the goods;
Beijing IP Court held that trademark as a whole consisted of apple device and word part, of which the apple device has been recognized as well-known trademark and has strong distinctiveness. The relate public will naturally associate
With regard to the word part "面容ID", "面容" means facial appearance while "ID" means identification.
Firstly, the related public easily deem it has connections to
Furthermore, the defendant doesn't provide evidence to prove "面容ID" has been generalized among the same industry. On the contrary,
Not surprisingly, CNIPA, dissatisfied the decision, appealed with
What can we learn from this case?
Trademark distinctiveness is an important concept in the trademark law. When judging whether the mark belong to the scenario of Article 11.2, i.e. exclusively indicate the function or usage of goods, the key point is to determine if the mark at issues is "descriptive mark" or "suggestive mark". The former one without distinctive characters is not eligible for registration, or registrable, such as "WIFI" or "5G", on mobile phone, while the latter one has relatively weak distinvctiveness though, it is still able to perform the essential trademark function, thus it is presumed to be entitled to trademark protection.
"Suggestive mark" tends to indicate the nature, quality, or a characteristic of the goods or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic.
According to the judgement, "" belong to the said "suggestive mark". The judgement also highlighted the general assessment of "suggestive mark":
- Whether the consumers can directly identify the mark which is descriptive on characters of goods without imagination when noticing the mark;
- Whether the mark belongs to the common expression to describe such goods by the same industry involver.
In the case at issue the applicant
In general, the judgment on trademark distinctiveness is relatively arbitrary and complex. In this regard, the enterprise is better to select the distinctive and distinguished trademark at first.
If the trademark is refused due to the lack of distinctiveness, it is recommended to actively take follow-up actions when the trademark is confirmed to be distinctive.
If a trademark with no distinctive character (no inherent distinctiveness) and is prima facie unregistrable, the enterprise still could overcome and strive for through acquired distinctiveness, in the way of providing a large number of use evidence in order to demonstrate the essential distinguished function of a trademark.
Registrability of retail and wholesale services in
By
For a long time, "retailing" and "wholesaling" are not registrable under the Nice Classification (NCL). The rationale behind this is that "retailing" and "wholesaling" have been considered as ancillaries to the sale of goods and do not constitute services for the benefit of others, and thus not protectable.
Over the years, however, more and more countries are opening their doors for "retailing" and "wholesaling" services.
In the EU, the 2008 CJEU Decision in the Praktiker Case paved the way for registering the retailing of goods. The 2014 Netto Marken Decision even allowed the acceptance of retailing of services.
In
In
The latest Nice Classification (the NCL11-2020 edition) provides limited items of retail and wholesale services, which includes
- 350148 wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies
- 350147 online retail services for downloadable and pre-recorded music and movies
- 350145 online retail services for downloadable digital music
- 350146 online retail services for downloadable ring tones
- 350092 presentation of goods on communication media, for retail purposes
- 350108 retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies
- 350153 retail services for works of art provided by art galleries
- 350163 retail services relating to bakery products
Besides, an explanatory note also suggests that Class 35 includes, in particular, "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes".
Although the Chinese Classification does include the above explanatory note, it differs from the Nice Classification by precluding the items in bold of the above list and it also added a few items relating to retailing or wholesaling for pharmaceutical, veterinary and sanitary preparations and medical supplies.
In its current practice, the CNIPA does not accept a generic expression of "retail" or "wholesale" services, nor does it accept retail or wholesale services for specific goods except for those mentioned above,
For international registrations designating
So, what to do under this circumstance?
We advise clients in this situation not to fight hopeless reviews, but to have practical approach to the problem: filing a national trademark registration application covering all sub-classes in Class 35. If the new application is granted, their trademark will enjoy maximum protection in Class 35 from possible infringement.
Despite the CNIPA's current stance against retail and wholesale services, there are signs that it will gradually shift and become more in line with the international practice.
By then, owners of Class 35 trademarks can choose to expand coverage to new service items based on their scope of business.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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