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Case Brief]
“静安面包房”is the first French style bakery in Shanghai since the “cultural revolution” and is very famous chain shop in Shanghai.
On May 30, 2005, Shanghai Jing An Bakery Co., Ltd filed an trademark application for “静安面包房”(“Jing An Bakery” in Chinese) in Class 30 covering the goods of rusks, biscuits(cookie), cake, bread etc. By reference to Article 10.2 and Article 28 of Trademark Law of PRC, China Trademark Office (CTO) dismissed this application on the ground that the word “Jing An” in this trademark is a name of one district in Shanghai, which belongs to an administrative divisions at or above the county level and is not allowed to be registered as trademark. Dissatisfied with the dismiss decision of CTO, Shanghai Jing An Bakery Co., Ltd engaged our firm to file an application for trademark review to Trademark Review and Appraisal Board (“TRAB”) of CTO.
[Representation opinions and result of trademark review case]
Representation opinions
1. In addition to the meaning of a geographical name, the word “Jing An” also has other meanings which are stronger than the meaning of geographical name.
Article 10.2 of Trademark Law provides that the geographical names of administrative divisions at or above the county level shall not be used as trademarks, except for geographical names that have other meanings.
The word “静安”in the trademark application of “静安面包房”(“Jing An Bakery” in Chinese) is same to the geographical name of Jing An district of Shanghai. However similar to other geographical names such as Jing An District and Jing An Hotel, the name of “静安面包房” is came from the Jing An Temple in Shanghai. When talking about “静安” in Shanghai, people will firstly think about “Jing An Temple”, which has the meaning of religious and tourist site more than just a geographical name Jing An District. According to the Trademark Examination Standards, if the geographical name included in the trademark application has other meaning which are stronger than the meaning of geographical name, it can be registered as trademark. Therefore “静安面包房”(“Jing An Bakery” in Chinese) can be registered as trademark.
2. “静安面包房” (“Jing An Bakery” in Chinese) is a name (trade name) of the trademark applicant
The full name of the applicant is “上海静安面包房有限公司” (“Shanghai Jing An Bakery Co., Ltd” in Chinese). The applied trademark “静安面包房” (“Jing An Bakery” in Chinese) is the core and most distinctive part of the enterprise name of the applicant, namely trade name. The applicant has opened many chain shops in Shanghai by using its trade name. According to the Trademark Examination Standards, if the name (trade name) of the trademark applicant contains geographical name and if the applicant uses its trade name “静安面包房” (“Jing An Bakery” in Chinese) to apply for trademark, such application shall be approved.
3. The mark “静安面包房” (“Jing An Bakery” in Chinese) has gained distinctiveness after long-term use by the applicant
The Jing An Bakery was established in June 1985 and its original name is “Shanghai Jing An Hotel Bakery”. This bakery is the first French style bakery jointly invested by Jin Jiang International Group (Hong Kong) Co., Ltd and Shanghai Jin Jiang International Food & Beverage Investment Company.
At the beginning operation of this bakery, it is presided by a French baker named Martin, who taught his baking skills to other Chinese workers. After 20-years operation by the applicant, the Jing An Bakery is developed and expended quickly in Shanghai and has opened more than 60 chain shops in Shanghai in 11 district of the city. “Jing An Bakery” has become a very recognizable and familiar name to the public and become a famous brand to the daily life of Shanghainese. Therefore the distinctiveness of “静安面包房” (“Jing An Bakery” in Chinese) as a trademark is irrefutable and will not cause the confusion of the customers regarding its source. Therefore “静安面包房” (“Jing An Bakery” in Chinese) can be registered as trademark.
4. Many other trademarks containing the geographical name “静安”（Jing An in Chinese）have been approved for registration in many classes.
The following marks are some sample:
Registration Number：
 
858628 779655, 779650
Registration Number：
 
780072,784157 3876336,3876335
Both the trademark of this case and above-mentioned trademarks include the words “静安”(Jing An in Chinese). The rest words “面包房” (bakery in Chinese), like other words such as “寺”（temple in Chinese） and “阁” （pavilion in Chinese） in other trademarks, refer to the service location and has no distinctiveness. Since the above-mentioned trademarks have been approved for registration, the trademark “静安面包房” (“Jing An Bakery” in Chinese) shall also be approved for registration.
Result of trademark review
After review and appraisal, the TRAB finally published this trademark application after a preliminary examination and approval.
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