Today, the Beijing High People's Court released the "Top 10 Judicial Protection Cases for Intellectual Property Rights in 2023" and the "Top 10 Judicial Protection Cases for Trademark Authorization and Confirmation in 2023". The administrative dispute case concerning the rejection review of the "Erdos" trademark application, represented by Globe-Law Law Firm partners Shang Jiaquan, Lu Qiuyu, and lawyer Xu Lianhua, was successfully selected.

This marks Globe-Law's second consecutive year being included in Beijing Court's Top 10 Judicial Protection Cases for Trademark Authorization and Confirmation. Previously, the administrative dispute case regarding the invalidation of the "Sina Big Eye Graphic" trademark, represented by Globe-Law partners Shang Jiaquan, Lu Qiuyu, Zhao Yanjie, was selected as one of Beijing Court's 2022 Top 10 Judicial Protection Cases for Trademark Authorization and Confirmation.

Beijing Court's Top 10 Judicial Protection Cases for Trademark Authorization and Confirmation in 2023

Administrative Dispute Case on the Rejection Review of the "Erdos" Trademark Application

Basic Information

Case Nos.: (2023) Jing Xing Zhong No. 476; (2022) Jing 73 Xing Chu No. 9298

Plaintiff: Inner Mongolia E**rduosi Resources Co., Ltd.

Defendant: China National Intellectual Property Administration (CNIPA)

Case Summary

On February 7, 2021, Inner Mongolia E**rduosi Resources Co., Ltd. (hereinafter "Erdos Company") applied for registration of the "Erdos ERDOS" trademark (No. 53638463) under Class 22 for goods including "fibrous textile materials, wool, and carded wool". CNIPA rejected the application, citing violation of Article 10(2) of the Trademark Law.

Dissatisfied with the decision, Erdos Company filed a lawsuit with the court of first instance, which upheld CNIPA's ruling. The company then appealed. The second-instance court held that, based on evidence submitted, the trademark had acquired distinctiveness through prior use on "wool, carded wool, and combed wool" before the geographical name was established, thus differentiating it from the place name. Therefore, the trademark's registration for these goods did not violate Article 10(2) of the Trademark Law. However, for other goods, the trademark lacked such distinctiveness and remained unregistrable. The second-instance court revoked the first-instance judgment and CNIPA's decision, ordering a re-examination.

Case Significance

This case establishes a precedent for determining when a trademark acquires distinctiveness beyond its geographical meaning. The court clarified that when a trademark combines a county-level (or above) administrative geographical name with other elements and as a whole carries meaning distinct from the place name, it may not fall under the prohibition of Article 10(2) of the Trademark Law.

The judgment confirmed that through long-term use and established recognition, the "Erdos" trademark had developed secondary meaning for "wool, carded wool, and combed wool", sufficiently distinguishing it from the geographical designation. This ruling provides guidance for evaluating whether geographical trademarks possess "other meanings" under the Trademark Law.