A Combination Consisting of a Traditional and a New Model Trademark Is Permitted to Be Registered as a Trademark.

Intellectual Property Office indicates that they consider having the new model trademark composed of three-dimensional shape, color, and sound, etc., which is added to the Trademark Law, registered as a combination trademark of a registered trademark by the exclusive right holder of a traditional trademark. For example, a combination of President Chain Store’s “7-Eleven” trademark and colors red, orange, and green, can be registered as a combination trademark.

 

According to Article 5 of the current Trademark Law, a trademark may be composed of a word, figure, symbol, color, sound, three-dimensional shape or a combination thereof. However, there is no definite stipulation concerning whether the combination of traditional and new model trademarks can serve as an object of registration application. Though Intellectual Property Office is inclined to approve the registration application for a combination of the traditional and new model trademarks, it would be better for the applicant to first evaluate whether such an application will diminish the protection scope of a whole trademark in case respective feature of a trademark has possessed distinctiveness.

 

Take President Chain Store for example. The combination of the registered “7-Eleven” trademark and colors red, orange, and green have possessed considerable distinctiveness. In this situation, registration for respective feature will be more favorable. Since the word and color of a combination are the components of a whole trademark, whether the right holder can exercise his exclusive right of a whole trademark remains questionable, and the right scope of claiming trademark confusion will diminish as well if anyone simply uses in his trademark the similar color combination or wording.

 

The law field indicates that the biggest controversy in practice is that a trademark consisting of one single color or color combination has become a commonly used mark by the industry after the long-term use by the original trademark holder. In this regard, though the amended Trademark Law has stipulated that a color trademark can serve as an object of registration application, and has made the enforcement date of the amended Law (November 28, 2003) the filing date, such application will not be approved and accepted in accordance with the Trademark Law since such a trademark has been commonly used in the industry. It leads to a situation that such a trademark cannot be registered even though such registration is upheld by lawful provisions.

CYJ/CCS