Appeal against the Trademark Review of "Boots Workshop"
Trademark: Kutsushita Kobo
Cited Trademark: Kutsushita-ya
A typical case in China where the coexistence of trademarks was used to overcome the rejection of similar trademarks on identical goods
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 because it contained the publicly known foreign place name "Milan." Our legal opinion is that this trademark is completely different from "Milan," and "Milan" has a second meaning, 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 and 25, etc., related to fashion and clothing, which are the first things associated with "Milan." 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 rejection and review litigation have not been supported by the courts. However, the evidence listed in the judgments of the relevant cases mostly consists of web search results to prove that "Milan" has the meaning of "Milan Flower." So 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's "Practical Encyclopedia of Flowers and Bonsai" contains a detailed introduction to "Milan Flower." At the same time, we also purchased the book "Plant Encyclopedia" to prove that "Milan" has a second meaning. Finally, our legal opinion and evidence were 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 rejection reviews 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.
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