09 November 2017

Registering trademarks that use the names of foreign countries--A case study of VON DUTCH (1)

This article was written by Lin Jiuchu(Partner), Zhang Jiaqi(Senior Associate) and Xu Huiwen(Legal Assistant).

Case profile

On 10 June 2015, ROYER BRANDS INTERNATIONAL S.A.R.L. (“Royer”) filed an application with the PRC Trademark Office (“CTMO”) to register trademark No. 17165853 “a-case-study-of-von-dutch” for designated goods in Class 18, which includes items such as backpacks, wallets, purses, leather belts, umbrellas, parasols and walking sticks.

The CTMO refused the application on the grounds that “Dutch” means “of the Netherlands” (“荷兰” in Chinese). Names of foreign countries are not permitted to use as trademarks under Chinese law. Royer appealed the CTMO’s decision with the Trademark Review and Adjudication Board (“TRAB”). Citing Article 10.1.2 of the PRC Trademark Law, TRAB agreed with the CTMO’s decision.

Royer then initiated administrative litigation. After hearing the case, the Beijing Intellectual Property Court (“Beijing IP Court”) found in favor of Royer and overturned the decision of TRAB. 

Key issue 

The key issue was whether the fact that Royer’s trademark “VON DUTCH” was approved for registration in the Benelux Economic Union and the European Union amounted to approval of the trademark from the Dutch government.

The Beijing IP Court found in the affirmative. They held that TRAB erred in  law.

Innovation of the case

KWM represented Royer in the first instance hearing, and argued the following:

1. Approval of the trademark in the Netherlands amounted to permission from the government under Article 10.1.2 of the PRC Trademark Law.

In terms of law and regulation, the revised “Trademark Review and Adjudication Standards” expressly provides that:

“Where the applicant has registered its trademark in the foreign country concerned, such registration amounts to consent of the government to the use of their name in the trademark.”

In terms of judicial practice, precedents like the Administrative Judgment[1]state that:

“the plaintiff’s trademarks No. 654834 and No. 659372, which were approved for registration in Switzerland, both contain the word ‘CHRONOSWISS’. Approval of the trademark amounts to permission from the Confederation of Switzerland for ‘SWISS’ to be used as a trademark.”

It is generally accepted in academic circles that if an application for a trademark containing the name of a foreign country is approved in that country, then the foreign government has given permission for the use of its name.

2. The trademark’s registration in the Benelux Economic Union and the European Union should be deemed constituting permission from the Dutch government.

As stated above, approval of a trademark by the foreign country concerned, can be taken as consent by that government to the use of its name. The “VON DUTCH” case is unique in that pursuant to international treaties[2], the Dutch government authorized the Benelux Trademark Office (“BTO”)and the EU Intellectual Property Office to be responsible for the trademark registration in its place. The main issue in this case was whether approval for registration by the Benelux Economic Union and the European Union equated to permission from the Dutch government to use its name.

The Benelux Uniform Trademark Law in the Benelux Convention Concerning Trademarks has been incorporated into Dutch domestic law. The Benelux Trademark Office was established by this treaty. Therefore, approval of “VON DUTCH” for registration by the BTO has the same effect as approval under Dutch domestic law, and should be taken as consent from the Dutch government to the use of its name. The Netherlands' accession to this international treaty constitutes a voluntary renunciation of sovereignty by the transference of certain functions and powers to institutions. Decisions of these institutions made within the transferred powers are binding and shall be recognized, enforced and protected by such parties. Therefore, in the absence of a declaration to the contrary, the Dutch government has approved the trademark and given it legal effect.

“VON DUTCH” has been used throughout China for years, and is a known clothing and accessory brand. Refusal to register the trademark would result in material commercial loss to Royer. The first instance judgment safeguarded Royer from such loss. The judgment is a valuable guide to interpreting the legislation and judicial practice. The judgment was detailed and set standards regarding trademarks using the names of foreign countries.

In conclusion, the law is that when an organization (of which the foreign country is a member state) approves registration of a trade mark, this constitutes permission by the government concerned to use their country’s name.[3]

[1] [2014] Yi Zhong Xing (Zhi) Chu Zi No. 8273

[2] Such as the Benelux Convention concerning Trademarks, the Treaties of the European Union, and the Treaty on the Functioning of the European Union

[3]  Article 10.1.2 of the PRC Trademark Law.

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