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The rain season is hitting Shanghai, but the upside is that this gives us time to stay indoor and read more! Look what we have in the new GossIP issue.
Facial recognition is a form of biometric authentication, which uses face measurements to verify your identity. We know that face recognition is largely used in China, but can it be trademarked? In the first article, you can read the case of Apple's face ID trademark.
We talk then about the registrability of "retailing" and "wholesaling" as services in China: having been considered as ancillaries to the sale of goods, they were for long not protectable. What about now?
In the following article we explore how Big Data can benefit from copyright protection, from computer software applied in data collection and processing to the data sets, to the outcomes generated via Big Data technologies.
The last article deals with the "Force Majeure clause" issued by the International Chamber of Commerce to help companies to relieve or mitigate the obligation to perform a contract during the pandemic.
Finally, have a look to the news of the HFG office!
Stay dry and enjoy the reading.
Apple's FACE ID trademark (finally) granted!
By Ariel Huang
Face ID is a facial recognition system designed and developed by Apple Inc. for their iPhone and iPad Pro. Apple announced Face ID during the unveiling of the iPhone X on September 12, 2017. It has since been updated and introduced to most new iPhone models, and all iPad Pro models. And what about the trademark registration? Has Apple succeeded in getting the trademark granted?
On September 12, 2017, Apple Inc. applied a new trademark application for No. 26351410 on in class 9 on "computers, phones, 3D glasses etc." for their new technology, the successor of Touch ID.
The above trademark was preliminarily refused due to the lack of distinctiveness. The CNIPA deemed that "面容ID" could be translated as "face identification", therefore, the use on its designated goods "computer" etc. exclusively indicates the function and usage of the goods, which constitutes the scenario of Article 11.2, thus rejecting Apple's appeal [Shang Ping Zi [2019] No.0000009467].
Article 11.2 of Trademark Law: None of the following marks may be registered as trademarks: (2) Where it only directly indicates the quality, principal raw materials, function, use, weight, quantity or other features of the goods;
Apple Inc. appealed to the Adjudication Board of CNIPA (prior "TRAB") and claimed that the apple device included in the Applied Trademark has strong distinctiveness and has been recognized as well-known trademark. It is the apple device that makes the Applied Trademark as a whole not directly indicate the characteristic and functions of designated goods, on the contrary, has originality and distinctiveness. Nevertheless, the Re-Examination Chamber of CNIPA uphold the prior decision and confirmed the rejection of the trademark.
Apple Inc. dissatisfied with the outcome and further appealed to Beijing IP Court that is in charge of the administrative litigations brought against CNIPA.
Beijing IP Court held that trademark as a whole consisted of apple device and word part, of which the apple device has been recognized as well-known trademark and has strong distinctiveness. The relate public will naturally associate Apple Inc. when they see the graphic logo.
With regard to the word part "面容ID", "面容" means facial appearance while "ID" means identification.
Firstly, the related public easily deem it has connections to Apple Inc's product regarding face or identity when noticing the trademark.
Furthermore, the defendant doesn't provide evidence to prove "面容ID" has been generalized among the same industry. On the contrary, Apple Inc. has provided evidence to prove "面容ID" is original and already put into use, which is distinguished from others. Therefore, 
has distinctiveness and does not constitute the scenario of Article 11.2. [(2019)Jing 73 Xing Chu No.7298]
Not surprisingly, CNIPA, dissatisfied the decision, appealed with Beijing High People's Court. Beijing High People's Court supported the first instance decision and confirmed the validity of the trademark. [(2019)Jing Xing Zhong No.9302]
What can we learn from this case?
Trademark distinctiveness is an important concept in the trademark law. When judging whether the mark belong to the scenario of Article 11.2, i.e. exclusively indicate the function or usage of goods, the key point is to determine if the mark at issues is "descriptive mark" or "suggestive mark". The former one without distinctive characters is not eligible for registration, or registrable, such as "WIFI" or "5G", on mobile phone, while the latter one has relatively weak distinvctiveness though, it is still able to perform the essential trademark function, thus it is presumed to be entitled to trademark protection.
"Suggestive mark" tends to indicate the nature, quality, or a characteristic of the goods or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic.
According to the judgement, "" belong to the said "suggestive mark". The judgement also highlighted the general assessment of "suggestive mark":
- Whether the consumers can directly identify the mark which is descriptive on characters of goods without imagination when noticing the mark;
- Whether the mark belongs to the common expression to describe such goods by the same industry involver.
In the case at issue the applicant Apple Inc. did the smart move to give a boost of distinctiveness to their trademark by including in the trademark specimen the famous apple device to give to the whole trademark a higher gradient of distinctiveness. This was probably a crucial factor in the determination of the judges to grant the trademark.
In general, the judgment on trademark distinctiveness is relatively arbitrary and complex. In this regard, the enterprise is better to select the distinctive and distinguished trademark at first.
If the trademark is refused due to the lack of distinctiveness, it is recommended to actively take follow-up actions when the trademark is confirmed to be distinctive.
If a trademark with no distinctive character (no inherent distinctiveness) and is prima facie unregistrable, the enterprise still could overcome and strive for through acquired distinctiveness, in the way of providing a large number of use evidence in order to demonstrate the essential distinguished function of a trademark.
Registrability of retail and wholesale services in China
By Emma Qian
For a long time, "retailing" and "wholesaling" are not registrable under the Nice Classification (NCL). The rationale behind this is that "retailing" and "wholesaling" have been considered as ancillaries to the sale of goods and do not constitute services for the benefit of others, and thus not protectable.
Over the years, however, more and more countries are opening their doors for "retailing" and "wholesaling" services.
In the EU, the 2008 CJEU Decision in the Praktiker Case paved the way for registering the retailing of goods. The 2014 Netto Marken Decision even allowed the acceptance of retailing of services.
In Japan, retail and wholesale services became registrable in 2007.
In China, in 2013, the former China Trademark Office (CTMO, which has been renamed to CNIPA) opened a crack only wide enough to allow retail and wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.
The latest Nice Classification (the NCL11-2020 edition) provides limited items of retail and wholesale services, which includes
- 350148 wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies
- 350147 online retail services for downloadable and pre-recorded music and movies
- 350145 online retail services for downloadable digital music
- 350146 online retail services for downloadable ring tones
- 350092 presentation of goods on communication media, for retail purposes
- 350108 retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies
- 350153 retail services for works of art provided by art galleries
- 350163 retail services relating to bakery products
Besides, an explanatory note also suggests that Class 35 includes, in particular, "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes".
Although the Chinese Classification does include the above explanatory note, it differs from the Nice Classification by precluding the items in bold of the above list and it also added a few items relating to retailing or wholesaling for pharmaceutical, veterinary and sanitary preparations and medical supplies.
In its current practice, the CNIPA does not accept a generic expression of "retail" or "wholesale" services, nor does it accept retail or wholesale services for specific goods except for those mentioned above,
For international registrations designating China, "retail" and "wholesale" are the two sensitive words that will easily trigger a refusal. Unless the wording limits the services to the scope of pharmaceutical, veterinary and sanitary preparations and medical supplies, a refusal is inevitable and an appeal is hopeless.
So, what to do under this circumstance?
We advise clients in this situation not to fight hopeless reviews, but to have practical approach to the problem: filing a national trademark registration application covering all sub-classes in Class 35. If the new application is granted, their trademark will enjoy maximum protection in Class 35 from possible infringement.
Despite the CNIPA's current stance against retail and wholesale services, there are signs that it will gradually shift and become more in line with the international practice.
By then, owners of Class 35 trademarks can choose to expand coverage to new service items based on their scope of business.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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