Stihl case: Colour combination trademark registration in China

The Beijing Intellectual Property Court (Beijing IP Court), on 7 August 2018, rendered an administrative ruling affirming the distinctiveness and registrability of the abstract colour combination trademark “orange and grey” (registered trademark), filed on 10 June 2015 by Andreas Stihl AG & Co. KG (Stihl), in respect of chainsaws in class 7.

The application was at first refused by the China Trademark Office (CTMO) for lack of distinctiveness. In June 2016, Stihl appealed to the Trademark Review and Adjudication Board (TRAB), arguing that (1) the applied abstract colour combination trademark has acquired secondary meaning through extensive use; and (2) Stihl had already obtained, in August 2015, the registration of another “orange and grey” position trademark in respect of chainsaws which proved that the applied trademark was registrable (previous registration).

The previous registration had been filed in 2011 and had been refused by the CTMO for lack of distinctiveness. Meanwhile, Stihl had engaged in several administration enforcement actions against an infringer producing and selling exact replicas of its chainsaws. The raid actions had been followed by two civil litigations, and judgements had been rendered in favour of Stihl on the basis of unfair competition. These civil judgments had obviously contributed to convincing the TRAB of the distinctive character acquired by the combined colours, as applied on the chainsaws. The previous registration had been obtained from the TRAB, after a long procedure.

Yang Mingming is a partner at Wanhuida Peksung IP Group

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