Intellectual Property
BIODERMA Finally Approved for Registration in Class 5
in China after Three lots of Court Proceedings
Published 8 May 2023
On 20 April 2023, the Supreme People’s Court of China issued a report entitled “Intellectual Property Protection by Chinese Courts in 2022”, in which it mentions that the criteria for determining the distinctiveness of English trademarks were clarified during the retrial of the denied “BIODERMA” trademark application. On 23 April, a “Summary of the Annual Report of the Supreme People’s Court on Intellectual Property Cases (2022)” was published online. This annual report sets out 43 legal application issues from the intellectual property cases concluded by the Supreme People’s Court in 2022, including determining the distinctiveness of English trademarks clarified in the case of NAOS vs. CNIPA – the BIODERMA case.
NAOS, a French cosmetics manufacturer, filed an application for registration of its trademark BIODERMA in relation to various goods including “pharmaceutical preparations, pharmaceutical preparations for skin care” in Class 5 with the China National Intellectual Property Administration (CNIPA) on 2 February 2018. However, this application was rejected by the CNIPA, based on the alleged contravention of Item 7, Paragraph 1 of Article 10 and Item 2, Paragraph 1 of Article 11 of the PRC Trademark Law:
Item 7, Paragraph 1 of Article 10 provides that:
The following signs shall not be used as trademarks: 7. Those of fraud that may easily mislead the public in the characteristics such as the
quality of goods, or place of production;
Item 2, Paragraph 1 of Article 11 provides that:
The following signs shall not be registered as trademarks:
2. Marks that simply indicate the quality, main raw materials, function, use, weight,
quantity or other features of the goods;
The CNIPA issued a Decision on Appeal for Rejection of Trademark BIODERMA No. 29087232 on 3 March 2019, and concluded that the word BIODERMA can be translated as “biological dermis”, and its use as a trademark in relation to “pharmaceutical preparations, pharmaceutical preparations for skin care” directly expressed the characteristics of the products including function and usage, and its use in relation to other goods than “pharmaceutical preparations, pharmaceutical preparations for skin care” would easily mislead consumers, and that the evidence submitted by NAOS was not sufficient to deny the possibility of confusion.
Dissatisfied with the CNIPA decision, NAOS filed an appeal in the Beijing IP Court, and submitted evidence such as dictionary definitions, trademark archives, promotional and use materials, and judgments of certain cases, to the court in support of its claims. However, NAOS’ claims were rejected by the court - the court held that the use of trademark in dispute in relation to the “pharmaceutical preparations, pharmaceutical preparations for skin care” contravened Item 2, Paragraph 1 of Article 11 of the Trademark Law, and the use in relation to “dietetic substances adapted for medical use, vitamin preparations” contravened Item 7, Paragraph 1 of Article 10. Further, it held that the evidence submitted by NAOS could not prove that the trademark in dispute had obtained a very high reputation and acquired distinctiveness, through use in relation to the goods at issue.
NAOS then appealed to the Beijing Higher People’s Court, on the following grounds: 1) The trademark in dispute is a fictional word created by NAOS, without a fixed/settled meaning, and does not directly express the quality, function, and use of the designated goods, and would not mislead consumers, and without the source of the dictionary, there was no basis for the CNIPA and the original court to translate it as “biological leather”; 2) The judgment of the meaning and distinctiveness of a trademark in a foreign language should be based on the common understanding of the relevant public in China - “DERMA” is not an English word, but a Greek word; and 3) NAOS already owned the registration for BIODERMA in relation to various goods in Class 5, and NAOS’ BIODERMA trademark has been widely used and promoted for a long time, and had obtained a very high reputation in the field of cosmeceuticals.
The Beijing Higher People’s Court issued a decision on 28 May 2020 and upheld the judgment of the Beijing IP Court. It concluded that the Chinese public when coming across BIODERMA would generally see BIO as being a shortened form of “biology”, and DERMA as being a common root in English, most likely referring to “dermis”, such that the combination of both of these words could be translated to “biological dermis”.
This decision was then appealed to the Supreme People’s Court, through a retrial process. The court pointed out that, to judge whether an English trademark is distinctive, it should be based on the common understanding of the relevant Chinese public who use the goods or services covered by the trademark application, and based on the overall constituent elements and meaning of the mark, considering the degree of association between the mark itself and the goods or services designated for use and whether the mark can play a role in distinguishing the source (or origin) of the goods or services during use.
BIODERMA cosmetics are popular in China, and the brand is recognized by many Chinese consumers to a certain extent. We believe that the CNIPA and courts sometimes “excessively” interpret foreign language trademarks, since consumers usually only pay attention to whether the products of this brand are easy to use. The Supreme People’s Court’s opinion corrects this overinterpretation and instead focuses on traditional aspects of trademark law and practice, being whether a mark can constitute a badge of origin through use.
NAOS, a French cosmetics manufacturer, filed an application for registration of its trademark BIODERMA in relation to various goods including “pharmaceutical preparations, pharmaceutical preparations for skin care” in Class 5 with the China National Intellectual Property Administration (CNIPA) on 2 February 2018. However, this application was rejected by the CNIPA, based on the alleged contravention of Item 7, Paragraph 1 of Article 10 and Item 2, Paragraph 1 of Article 11 of the PRC Trademark Law:
Item 7, Paragraph 1 of Article 10 provides that:
The following signs shall not be used as trademarks: 7. Those of fraud that may easily mislead the public in the characteristics such as the
quality of goods, or place of production;
Item 2, Paragraph 1 of Article 11 provides that:
The following signs shall not be registered as trademarks:
2. Marks that simply indicate the quality, main raw materials, function, use, weight,
quantity or other features of the goods;
The CNIPA issued a Decision on Appeal for Rejection of Trademark BIODERMA No. 29087232 on 3 March 2019, and concluded that the word BIODERMA can be translated as “biological dermis”, and its use as a trademark in relation to “pharmaceutical preparations, pharmaceutical preparations for skin care” directly expressed the characteristics of the products including function and usage, and its use in relation to other goods than “pharmaceutical preparations, pharmaceutical preparations for skin care” would easily mislead consumers, and that the evidence submitted by NAOS was not sufficient to deny the possibility of confusion.
Dissatisfied with the CNIPA decision, NAOS filed an appeal in the Beijing IP Court, and submitted evidence such as dictionary definitions, trademark archives, promotional and use materials, and judgments of certain cases, to the court in support of its claims. However, NAOS’ claims were rejected by the court - the court held that the use of trademark in dispute in relation to the “pharmaceutical preparations, pharmaceutical preparations for skin care” contravened Item 2, Paragraph 1 of Article 11 of the Trademark Law, and the use in relation to “dietetic substances adapted for medical use, vitamin preparations” contravened Item 7, Paragraph 1 of Article 10. Further, it held that the evidence submitted by NAOS could not prove that the trademark in dispute had obtained a very high reputation and acquired distinctiveness, through use in relation to the goods at issue.
NAOS then appealed to the Beijing Higher People’s Court, on the following grounds: 1) The trademark in dispute is a fictional word created by NAOS, without a fixed/settled meaning, and does not directly express the quality, function, and use of the designated goods, and would not mislead consumers, and without the source of the dictionary, there was no basis for the CNIPA and the original court to translate it as “biological leather”; 2) The judgment of the meaning and distinctiveness of a trademark in a foreign language should be based on the common understanding of the relevant public in China - “DERMA” is not an English word, but a Greek word; and 3) NAOS already owned the registration for BIODERMA in relation to various goods in Class 5, and NAOS’ BIODERMA trademark has been widely used and promoted for a long time, and had obtained a very high reputation in the field of cosmeceuticals.
The Beijing Higher People’s Court issued a decision on 28 May 2020 and upheld the judgment of the Beijing IP Court. It concluded that the Chinese public when coming across BIODERMA would generally see BIO as being a shortened form of “biology”, and DERMA as being a common root in English, most likely referring to “dermis”, such that the combination of both of these words could be translated to “biological dermis”.
This decision was then appealed to the Supreme People’s Court, through a retrial process. The court pointed out that, to judge whether an English trademark is distinctive, it should be based on the common understanding of the relevant Chinese public who use the goods or services covered by the trademark application, and based on the overall constituent elements and meaning of the mark, considering the degree of association between the mark itself and the goods or services designated for use and whether the mark can play a role in distinguishing the source (or origin) of the goods or services during use.
BIODERMA cosmetics are popular in China, and the brand is recognized by many Chinese consumers to a certain extent. We believe that the CNIPA and courts sometimes “excessively” interpret foreign language trademarks, since consumers usually only pay attention to whether the products of this brand are easy to use. The Supreme People’s Court’s opinion corrects this overinterpretation and instead focuses on traditional aspects of trademark law and practice, being whether a mark can constitute a badge of origin through use.
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