No CHEMDRAW for CambridgeSoft in China

[By Arthur Tan-Chi Yuan]

[Author’s note: Key lessons for non-Chinese litigants: descriptive and “distinctive features” in Chinese Trademark Law, Trademark Review and Adjudication Board]

CambridgeSoft Corporation (Petitioner, Plaintiff, Appellant)

v.

Trademark Review and Adjudication Board (Appellee)

Beijing High People’s Court

September 6, 2010.

In a case before the Beijing High People’s Court, CambridgeSoft Corp. suffered a setback for the exclusive right to use “CHEMDRAW” in China as a registered trademark for its popular software.

Procedural history:

“CHEMDRAW®”[1] is a well-known name associated with a chemical molecule drawings software used by many students, scientists, professors, and patent practitioners in the chemical related disciplines. The trademark “CHEMDRAW” is a US registered trademark of CambridgeSoft Corporation based in Cambridge, Massachusetts. According to its registration, it was first used in commerce in 1986 in the United States. With its popular software, CambridgeSoft sought to register the same “CHEMDRAW” software in class 9 with the Trademark Office of China on April 10, 2006.

However, the registration encountered some difficulties. In fact, the trademark application was refused by the Trademark Office of China on December 16, 2008. As such, CambridgeSoft requested a review by the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce. According to Rule 2 of the Rules of Trademark Review and Adjudication,[2] the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (the Board) shall be responsible for handling the following cases of trademark dispute:

(1) Cases of application for reexamination filed according to the provision of Article 32 of the Trademark Law out of dissatisfaction with decisions made by the Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Office) on rejection of applications for trademark registration;

(2) Cases of application for reexamination filed according to the provision of Article 33 of the Trademark Law out of dissatisfaction with opposition adjudication made by the Trademark Office;

(3) Cases of request for adjudication on cancellation of registered trademarks filed according to the provision of Article 41 of the Trademark Law; and

(4) Cases of application for reexamination filed according to the provision of Article 49 of the Trademark Law out of dissatisfaction with cancellation decisions made by the Trademark Office according to the provisions of Articles 41, paragraph one, 44 and 45 of the Trademark Law.

The Board held against CambridgeSoft on April 20, 2009, and CambridgeSoft sought administrative appeal to Beijing First Intermediate People’s Court. The Beijing First Intermediate People’s Court (trial court) upheld CambridgeSoft’s decision, so CambridgeSoft filed this appeal to the Beijing High People’s Court (Court).

Discussion:

The trial court found that the mark “CHEMDRAW” does not have a space between the alphabets, but it found that “CHEM” is a common root for chemistry. By separating “CHEMDRAW” according to Chinese reader’s habits, “Chem” is equivalent to “Chemo,” which means chemistry, and “draw” means “drawing”. Therefore, “CHEMDRAW” means chemical drawings. The application was filed for products in international classification 9, which includes computer software that may include data for chemical molecule. Therefore, the trial court found that the Board didn’t err in holding that the application failed to satisfy Article 11[3](1) and Article 28.[4] The trial court also rejected CambridgeSoft’s argument that the relevant consumers could completely distinguish products based on the applied application and that the application would not cause confusion in the market place to the consumers. The trial court further dismissed CambridgeSoft’s arguments that its other similar trademark applications are dependent on this mark.

On appeal, CambridgeSoft sought review on the main issue that “CHEMDRAW” is a combination of 8 alphabets without any space in between and any literal meaning. There are many ways to dissect these alphabets, and results of the dissection differ. As such, there is no factual or legal basis for the trial court’s way of separating the mark. The Board failed to provide any evidence showing “chem” means “chemistry.” Its proffered dictionary definition evidence merely showed that if a word having “chem” as its root; it would then be equivalent to “chemo,” which means “chemistry.” Here, “CHEMDRAW” is not a root for the word, so “chem” is not equivalent to “chemo,” and doesn’t mean “chemistry.” Furthermore, the native language of China is Chinese and it would require consultation to various dictionary definitions to identify the meaning of “chemistry” in the mark. Moreover, the word “draw” can also have many definitions in different contexts. Therefore, the relevant public would not directly comprehend “CHEMDRAW” as “chemical drawing.” In addition, CambridgeSoft’s “CHEMDRAW” product has been widely used in pharmaceutical, biotech, chemical and scientific research institutions such that there would be no likelihood of confusion. Therefore, this mark is distinct and other “CHEM” applications in classification 9 by CambridgeSoft are also distinct.

In its findings, the Court also noted that CambridgeSoft’s “CHEM” related marks have been registered in many countries such as USA, Hong Kong, and Japan.

In its application of the law, the Court first found that Article 11(2) merely prohibits marks that are direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods. With respect to the mark itself, the Court found that “CHEM” is a common root to mean “chemical,” “chemist,” or “chemistry” in chemical discipline. “Chem” is synonymous with “chemo,” which means “related to chemistry.” “Draw” has the meaning of “draw,” or “drawing.” Both words above are in common usage. To relevant consumers that use software and software programs, it is readily to them to separate “CHEMDRAW” to “CHEM” and “DRAW” and thus to interpret it to mean “chemical drawing.” Therefore, the Court found that the trial court and the Board didn’t err in their findings.

The Court also noted that CambridgeSoft failed to raise the issue that the mark has “acquired distinctive feature through use and become readily identifiable” [also in Article 11] before the Board. Therefore, that issue is not subjected to this appeal.

As such, the decision from the trial court is held.

Thoughts:

  1. The standard of review by the Court appears to review the issue of law on appeal de novo, and the standard of review for the finding of facts by the Board appears to be clearly erroneous.
  2. The Court appeared to hint in the opinion that CambridgeSoft failed to raise the exception to Article 11 before the Board. It is certainly a lesson for future trademark owners to remember to look into this exception.
  3. This case shows how judicial review of a rejection to a trademark application works:
    1. Petition to the Board;
    2. Appeal to the Beijing First Intermediate People’s Court; and
    3. Appeal to the Beijing High People’s Court
  4. Not all is lost. CambridgeSoft, like many international businesses, must understand that different countries’ trademark laws are different. Therefore, it is necessary to apply for other trademarks to protect its trade names. Indeed, it has also filed applications for marks in Chinese for its products.

[Author’s note: The summary and translation from the original decision in Chinese are author’s own work, and any errors thereof shall not be attributed to any portion of the original Chinese decisions.]


[1] US Trademark Registration 2064540 for “CHEMDRAW”.

[2] See the link in my post here.

[3] Article 11 The following signs shall not be registered as trademarks:
(1) those only comprising generic names, designs or models of the goods in respect of which the trademarks are used;
(2) those having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademarks are used; and
(3) those lacking distinctive features.
The signs under the preceding paragraphs may be registered as trademarks where they have acquired the distinctive features through use and become readily identifiable.

[4] Article 28 Where a trademark the registration of which has been applied for is not in conformity with the relevant provisions of this Law, or it is identical with or similar to the trademark of another person that has, in respect of the same or similar goods, been registered or, after examination, preliminarily approved, the Trademark Office shall refuse the application and shall not publish the said trademark.

Translated Decisions: