“Feizhi Milan” series trademark opposition review case
Applicant: Shanghai Liuyue Rongfang Catering Co., Ltd.
Focus of the Case: Providing stronger evidence increases the likelihood of overcoming the prohibition clause.
Our client's application for the "Feizhi Milan" series trademark was rejected by the Trademark Office under Article 10, Paragraph 2 of the Trademark Law, on the grounds that it contains the publicly known foreign place name "Milan". Our legal opinion is that this trademark is completely different from "Milan", and "Milan" has a secondary meaning, referring to a common plant, "Milan flower". In addition, the client uses this trademark on its Chinese restaurant and related goods and services, and not on goods in classes 18, 25, etc., which are the first associations with "Milan" related to fashion and clothing. The relevant public will not interpret "Feizhi Milan" as having a meaning related to the foreign place name "Milan". To this end, we searched for relevant cases, but unfortunately, similar cases of review and appeal have not been supported by the courts. However, the evidence listed in the judgments of the relevant cases shows that most of the evidence provided to prove that "Milan" has the meaning of "Milan flower" is only the result of online searches. Therefore, we decided to take a different approach and strengthen the evidence. Therefore, we contacted Mr. Ni, a horticultural expert from Beijing, for help. Mr. Ni provided "Practical Encyclopedia of Flowers and Bonsai", which contains a detailed introduction to "Milan flower". At the same time, we also purchased the book "Plant Encyclopedia" to prove that "Milan" has a secondary meaning. Finally, our legal opinion and evidence were both accepted by the Trademark Office. The Trademark Office considered that although the trademark contains "Milan", its overall meaning is different from the place name, and does not constitute the situation referred to in Article 10, Paragraph 2 of the Trademark Law. The client's 13 review and appeal applications were all supported by the Trademark Office, and all trademarks were successfully announced for initial examination. In addition, the client's subsequent applications for the "Feizhi Milan" trademark have not been rejected due to the inclusion of "Milan". The client's interests have thus been maximally protected.
