26 January 2018

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

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. 17165854 “a-case-study-of-von-dutche-2 ” for designated goods in Class 14. This class includes unprocessed and semi-processed precious metals, jewelry boxes, sleeve buttons, cufflinks, jewelry, watches and so on.

The CTMO refused the application on the grounds that “Dutch” means “of the Netherlands”.[1] Under Chinese law, names of foreign countries are not permitted to be used as trademarks. Royer appealed the CTMO’s decision to the Trademark Review and Adjudication Board (“TRAB”). TRAB dismissed the application on the grounds that “the word part of the trademark ‘VonDutch and Design’ implies ‘from the Netherlands’, and may mislead the public as to the place of origin of such goods when designated for use on goods including jewelry. Therefore the trademark application is prohibited under Article 10.1.7 of the PRC Trademark Law”.

Royer then initiated administrative litigation. After hearing the case, the Beijing Intellectual Property Court found in favor of Royer and overturned the decision of TRAB. TRAB appealed to the Beijing High People’s Court which upheld the first instance judgment.

Key issue

The key issue was whether Royer’s trademark “a-case-study-of-von-dutche-2 ” was “deceptive, and could easily mislead the public as to the quality or place of origin of the commodities” under Article 10.1.7 of the Trademark Law. If the answer was found to be in the affirmative, then the term could not be used as a trademark.

Both the Beijing Intellectual Property Court and Beijing High People’s Court held that:

  • Despite the possible implications of the word “Dutch” of “from the Netherlands” or “Dutch people”, “Dutch” is neither the official name of the country, nor what the Netherlands is referred to in English.
  • Chinese mainland consumers of “Von Dutch” goods typically would not associate “Dutch” with the Netherlands and misunderstand the goods to be from the Netherlands.
  • “Von” is a German preposition meaning “from (a certain place)”, while “Dutch” is English. The combination of the two words would not lead consumers to associate the trademark with “from the Netherlands” and in turn mistake the production place of such goods.
  • “Von Dutch” does not fall within the scope of Article 10.1.7 of the Trademark Law.

Innovative argument of the case

KWM represented Royer in both hearings, and argued the following:

“VonDutch” should not be understood as “from the Netherlands”, so its registration does not violate Article 10.1.7 of the Trademark Law.

1. The word “VonDutch” in the trademark “a-case-study-of-von-dutche-2 ” was apparently a ‘fanciful mark’ created by the plaintiff without inherent meaning. Even if taken apart, “Von”, a German preposition, and “Dutch”, an English noun or adjective, should not be mechanically interpreted as a whole without taking into account the difference in languages. Besides, “Dutch” is neither the official name of the country, nor what the Netherlands is referred to in English (as known to Chinese mainland consumers of relevant goods). The public typically would not associate “Dutch” with the Netherlands and misunderstand. 

2. In two comparable cases,[2] the Beijing Intellectual Property Court ruled that when determining whether a trademark violates Article 10.1.7 of the Trademark Law by being deceptive and thus misleading to the public, two elements are necessary:

  • Deceptiveness – there must be a material difference between features of the goods as demonstrated by the mark and the actual condition of the goods;
  • Misleading - to a degree that will influence purchase decisions of members of the public.

Trademark applications must fall within one of the designated classes of goods. Therefore, the element of deceptiveness is dependent on the class of designated goods.

Royer never promoted or marketed the goods bearing the Von Dutch trademark as being from the Netherlands. Even if the disputed trademark was translated as “from the Netherlands” – the Netherlands is not a famous place of origin of Class 14 goods (jewelry, watches, etc.), and is not relevant to features and quality of the goods. In other words, the public will not be more likely to purchase the goods if they thought they were of Dutch origin. Therefore, the trademark is not misleading and not in violation of Article 10.1.7 of the Trademark Law.

3. The proposed trademark is a namesake brand established by US motorcycle mechanic and artist Von Dutch (born Kenneth Howard). It has its own unique connotation, and after widespread use, has come to solely indicate Royer’s “VonDutch” brand and its Chinese translation “凡达驰”. Therefore, the general public will not mistakenly associate the trademark with the Netherlands.

The Beijing Intellectual Property Court, in a separate case, has already supported registration of the identical trademark “a-case-study-of-von-dutche-2 ” for goods in Classes 18 and 25. TRAB did not view “ a-case-study-of-von-dutche-2” / “VONDUTCH” in violation of Article 10.1.7 of the Trademark Law. Royer’s International trademark registration for “VON DUTCH” has obtained a territorial extension of protection in China for goods in Classes 14, 18 and 25. Adhering to the principle of a consistent standard for review and hearing, the trademark application should be approved.

“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 case made clear that “Dutch” is not an official name for the Netherlands, nor a commonly known English translation of the country’s name, and “VON DUTCH” as a whole should not be translated into “from the Netherlands”. These two judgments safeguarded Royer from material commercial loss. They also serve as valuable guides for interpreting the legislation and judicial practice concerning trademark registration containing foreign country names.

[1]“荷兰” in Chinese.

[2](2015) Jing Zhi Xing Chu Zi No. 3860 and (2015) Jing Zhi Xing Chu Zi No. 4649.

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