Recently, there is a kind of "milk skin" mask extolled by Li Jiaqi. It encountered obstacles when it is applied for trademark registration. Although it has gone through trademark application, review of trademark rejection, Beijing Intellectual Property Court proceedings, those still all failed.
Brief introduction
According to China trademark website, the trademark application of MG mask is pure Chinese character "奶皮" (milk skin) on October 19th 2018, and the applicant is Guangzhou MG Biological Technology Co. Ltd., hereinafter referred to as MG company, which is designated to use on the commodity of category 3, such as shampoo, non-medical bath salt, conditioner, facial cleanser, bath lotion, cosmetic mask, skin whitening cream, cosmetics set, cosmetics, cosmetics cleaning agent, etc.
Trademark Application Sample
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The Wrapping of Sales Products
In April 2019, State Intellectual Property Office decided that "奶皮" can not be used as trademark and rejected the registration application for the disputed trademark, because "奶皮" will easily make consumers mistakenly understand the raw materials of the products if it is used in designated commodities.
In May 2019, MG company applied for review, but it has been rejected.
For this result, MG company is certainly unsatisfied. According to the Article 34 of the Trademark Law, the applicant may appeal against decisions of Trademark Review Committees within 30 days from the date of receipt of notification.
Therefore, MG company filed the administrative lawsuit for trademark rejection review to Beijing Intellectual Property Court within the prescribed period.
The Court’s Opinion
In litigation, the plaintiff renounced the registration applications on commodities except cosmetic mask.
The plaintiff argued that the trademark "奶皮" is a common food name, used in "cosmetic mask" commodity that does not indicate the raw materials of commodity. The trademark widely used by the plaintiff, has been highly recognized, which won’t bring misunderstanding to consumers.
"奶皮" is a semi solid substance precipitated from the surface after the milk has been heated with high temperature. It is specified to use on cosmetic mask products, which can easily cause consumers to misunderstand the raw materials and ingredients, etc. Since the trademark is composed of Chinese characters "奶皮", Beijing Intellectual Property Court believes that it violates the provisions of subparagraph 7 paragraph 1 Article 10 of the Trademark Law.
The signs that are deceptive and can easily make the public misunderstand quality, origin or other characteristics of the commodity cannot be used as trademark. This is excerpt from subparagraph 7 paragraph 1 Article 10 of the Trademark Law
Currently, the plaintiff filed an appeal against Beijing Municipal Higher People’s Court.
Asia Smart’s Insights
1. Of absolute prohibition of Article 10
Article 10 of the Trademark Law belongs to absolute prohibited clauses of trademarks. Signs that violates this clause shall not be used as trademarks, let alone registration.
This is not the same with the trademark lacking of prominence. The trademark that is lack of prominence, indeed can obtain significant meaning through use, and then accordingly obtains prominence.
So, even if the mask gets a strong recommendation from e-commerce celebrity Li Jiaqi, it still can not get registered through being used. Accordingly, the Court dismissed the plaintiff's claim.
2. Where is the key point of second instance defense?
In this case, the Court cited Article 10, which protects public interests and further protects consumers from being misled by the titles of trademarks.
In other words, if it is necessary to get support from Beijing Municipal Higher People’s Court, it needs to prove that under the existing circumstances, the "Milk Skin" mask won’t mislead consumers.
Because there is indeed a great achievement in selling the "Milk Skin" mask, small number of my colleagues often use it. Therefore, if it can be proved to Beijing Higher People’s Court that through the existing sales situation, "Milk Skin" mask has trademark identification, and consumers are not based on ingredients containing milk skin to purchase it, then there is probability to successfully get the trademark application.
For example, if milk skin gets the second meaning in the involved trademark that is to describe the mask with smoothing property through the use in the long term by MG company, instead of indicating food, then it doesn't matter with raw materials. If milk skin indicates commodity characteristics, it will be lack of prominence. However, because of the popularity of "Milk Skin" mask, the trademark can be registered.
Those are our insights. We also welcome everyone to make comments.
3. If the second instance loses again, what will MG company face?
Besides, according to Article 52 of the Trademark Law, if enterprises use unregistered trademarks violating Article 10 of this Law, local industrial and commercial administration departments may prevent them from violating the law and make corrections in a limited period or fine.
If unregistered trademarks are used as the registered or using unregistered trademarks violating the Article 10 of this Law, they shall be stopped by local industrial and commercial administration departments and corrections should be made. They may be notified that the business operators whose revenue are more than 50,000 Yuan can be fined below 20% illegal operating amount, and the business operators without revenue or whose revenue are less than 50,000 Yuan in illegal operation, can be fined below 10,000 Yuan.
--- Excerpt from Article 52 of the Trademark Law
Therefore, if the second instance does not win, MG company will be probably facing a situation where the trademark of "Milk Skin" masks are prohibited to use. However, the premise is that local industrial and commercial administration departments exercise the authority.
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