CHANG TSI
Insights
The client's trademarks "SAPIM SPOKES AND NIPPLES" in Class 12 were initially refused by the China National Intellectual Property Administration (CNIPA) on the grounds that "the sign has unhealthy influence as a trademark in respect of the designated goods," in violation of Article 10.1(8). In the cases, we actively argued the word NIPPLE conveys multiple meanings in the dictionary. In the Applied Marks, when combined with the word "SPOKE" by the word “AND”, NIPPLE refers to a pipe fitting composed of a small threaded tube. The usage of "SPOKES AND NIPPLES" on the designated goods in Class 12 would not result in any unhealthy effects. Additionally, we actively communicated with the client to collect and submit relevant evidence of use of the marks. Ultimately, we overcame the refusals during the review process. The Trademark Review and Adjudication Board (TRAB) concluded that the trademarks, as a whole, don’t have unhealthy influence in respect of the designated goods.
1. The refusal based on such absolute prohibition grounds is quite difficult to overcome in practice;
2. The Applied Marks have not been widely used by the client in China.
Based on the challenges of this case, we devised the following strategies:
Overall Analysis of the Trademarks as an Entirety: Argue that the terms “SAPIM SPOKES AND NIPPLES” is not an inherent term or common expression, but a unique combination created by the applicant, with no fixed or special meaning, thus causing no adverse effects.
Explanation of Professional Meaning of “NIPPLES” in Specific Business Field: Focus on demonstrating that "NIPPLE" has multiple meanings in dictionaries and, when combined with "SPOKE," specifically refers to bicycle spoke components, having a clear professional meaning on the designated goods without adverse effects.
Consistency in Examination: Cite successful registrations of the applicant's trademarks in other countries or regions, along with examples of multiple trademarks containing the word "NIPPLE" that have been approved in China, stressing the need for uniform examination standards.
These two cases serve as a significant example and guide in handling trademark rejection reviews, as demonstrated in the following aspects:
Successfully Overcoming Absolute Prohibition Clauses: The cases successfully addressed the challenging rejection reason of "adverse effects," showcasing effective strategies for handling absolute prohibition reasons during the review phase.
Innovative Arguments: Established a "priority of professional meaning" approach, involving a comprehensive analysis of the trademark composition as a whole, professional context, applicant’s business field and actual use scenarios, demonstrating that the trademark has no adverse effects on the designated goods.
Request for Unified Examination Principles: By referencing the applicant’s successful registrations in other countries or regions, as well as the approval or registration of multiple trademarks containing the word "NIPPLE" across various classes, our team emphasize the principle of examination consistency and enhance the persuasiveness of our argument.
Thorough Collection and Submission of Evidence: Systematically gathered evidence from dictionary definitions, industry-specific usage, and actual usage on the client's website, forming a complete chain of evidence. This enhanced the factual basis for the reviews and successfully convinced the TRAB that the trademarks have no adverse effects.
The key breakthrough in this case lies in establishing the "priority of professional meaning" argumentation approach. By anchoring the term within the specific professional context of the relevant industry and leveraging evidence of the applicant's actual usage, we reshaped the examination perspective. This ultimately achieved a precise alignment between legal provisions and technical facts. The case provides an effective example for addressing trademark rejections based on "adverse effect". It fully showcases ChangTsi's capability in managing such types of cases and ensures the smooth processing of clients' trademark applications in China
