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Administrative litigation on review of trademark refusal involving Geistlich’s trademark

Case introduction


Geistlich Trading (Beijing) Co., Ltd (Geistlich Beijing), a subsidiary of the Swiss based Geistlich Group, has applied for territorial extension protection of the trademark “BIO-GIDE SHAPE” Registered through the Madrid System on goods of Class 10 "absorbable film for dental surgery, maxillofacial surgery and orthopedic surgery".


Both the Trademark Office and TRAB rejected the registration application of the disputed trademark on ground that the trademark constituted the conditions provided in item 2 of Paragraph 1, Article 11 of the Trademark Law, and lacked distinctiveness in the designated goods. Geistlich Beijing filed an administrative litigation against TRAB, requesting the cancellation of the refusal decision.


The court of first instance accepted the evidence submitted by TRAB after the court session without being challenged by the plaintiff, and held that since "BIO-GIDESHAPE" in the Bing Internet Dictionary was defined as collagen membrane, etc., Geistlich Beijing’s direct use of "BIO-GIDE SHAPE" as a trademark in the "absorbable film of dental surgery, maxillofacial surgery and orthopedic surgery" indicates the main raw materials of the goods, the trademark has constituted conditions provided in item 2 of Paragraph 1, Article 11 of the Trademark Law.


The court of second instance supported Geistlich Beijing’s claim and believed that the disputed trademark had no fixed dictionary meaning and its use on designated goods did not directly indicate the main raw materials of such goods, which made it distinctive enough to mark the origin of goods. The trial of court of first instance is procedurally flawed as its decision is made on grounds of evidence submitted by TRAB after the court session without going through the cross-examination process, and was not delivered to Geistlich Beijing.



As a representative of Geistlich Beijing, Sanyou attorneys participated in the trial of second instance of this litigation case.


Case review


To determine whether a foreign mark poetesses distinctiveness, it is necessary to first determine whether the foreign part has any meaning, and then determine whether the foreign mark can play a role in identifying the source of goods in combination with the classes of goods designated. To judge whether a foreign expression has meaning, officially published authoritative dictionary definition shall be referred to as the main basis of its meaning. The search results of the network dictionary can only be used as a supportive reference. The network interpretation from individual web pages cannot be used as the basis for determining whether a foreign trademark has intrinsic meaning.


This case involves determination of distinctiveness of foreign trademarks. The Trademark Office, TRAB (now CNIPA), and the court of first instance interpreted the meaning of the foreign trademark by searching the network dictionary, and further determined that the trademark "BIO-GIDESHAPE" directly indicated the characteristics of the main raw materials of the designated goods, constituting the conditions provided in item 2 of Paragraph 1, Article 11 of the Trademark Law, and thus decided the disputed trademark lacked distinctiveness.


Our attorneys demonstrated that the disputed trademark was defective from both ends: first, the trademark expression was not listed in the commonly used English-Chinese dictionary and professional medical dictionary, and thus had no fixed dictionary meaning; and second, the meaning of the foreign expression acquired from network dictionary is not accurate. It is unreliable to use the meaning of the network dictionary as the evidence to judge the distinctiveness of foreign trademarks. Network dictionary definition can not prove that a foreign trademark is not distinctive though many well-known trademarks (foreign vocabulary or expression) can be found on it.


In the judgment, the court of second instance clarified that when judging the distinctiveness of foreign trademarks, officially published authoritative dictionary definition shall be adopted as the main basis for determining the meaning of foreign trademarks. The search results of the network dictionary can only be used as a supportive reference. It cannot be used as basis for determining whether a foreign trademark has intrinsic meaning.








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