What the LV case means for trademark protection

A trademark dispute now before the Beijing Intellectual Property Court (BIPC) could help clarify one of the most important questions in China's trademark system: Where should the boundary lie for the registration and protection of commercial brands derived from public cultural elements?

On July 16, the BIPC heard an administrative trademark lawsuit filed by Louis Vuitton Malletier against the China National Intellectual Property Administration, with Huang Minyao, a clothing business operator from Shantou, Guangdong province, as a third party.

A four-petal floral design trademark that Huang applied for is deemed by LV to be confusingly similar to its iconic monogram pattern.

The dispute arose after CNIPA rejected LV's challenge to the petal-shaped trademark registered by Huang.

It is the sixth trademark lawsuit LV has filed against CNIPA, having won three and lost two of the previous five cases.

Unlike the earlier high-profile dispute between LV and Shenzhen-based Molly Tea Catering Management, this is not an infringement case but an administrative lawsuit that challenges the legality of a regulatory decision.

The two cases are deeply connected in legal principle, but administrative trademark disputes differ fundamentally from infringement lawsuits in nature, subject matter, and standards of proof.

Infringement litigation determines whether conduct falls within the scope of an exclusive trademark right, whereas administrative litigation examines the legality of decisions made by trademark authorities on registration applications, oppositions, or invalidation requests.

This means BIPC will not rule on whether Huang infringed LV's rights, but will review whether CNIPA properly applied the current Trademark Law provisions concerning distinctiveness, similarity, well-known trademark protection, and public interest reservations when it rejected LV's plea for invalidation.

This requires the court to return to the authorization conditions under the Trademark Law.

Under the current provision, signs consisting solely of generic names, graphic elements, place names, or other features lacking inherent distinctiveness — including public cultural resources such as traditional patterns, natural imagery and geometric designs — shall not be registered unless they have acquired distinctiveness through use and become readily identifiable with particular goods or services.

If the disputed trademark involves public cultural elements such as traditional patterns or natural floral designs that typically possess weak inherent distinctiveness, the court will focus on whether CNIPA fully considered this factor and rigorously examined evidence of acquired "secondary meaning".

Public reaction to the LV-Molly Tea infringement case has already demonstrated widespread concern over attempts to register and monopolize traditional motifs such as the four-petal flower or Baoxiang patterns.

At the authorization stage, the issue is even more fundamental: If public cultural elements inherently lack distinctiveness and the applicant fails to prove that the symbol has acquired an independent identity distinct from its public-domain meaning, is administrative approval justified in the first place?

Trademark law is not meant to enclose public cultural resources as private property through registration, but to protect commercial identifiers that distinguish goods or services and thereby promote fair competition.

For traditional cultural elements that have public interest, trademark examination should adopt a prudent stance.

Regulators must prevent market players from privatizing commonly available design resources through registration and obstructing other operators' fair use of cultural elements.

On the other hand, they must respect the goodwill accumulated by enterprises through creative transformation and sustained commercial use.

The key lies in balancing "distinctiveness" against "public domain preservation" without lowering examination standards for auxiliary graphic elements simply because an applicant has a formidable reputation in other product categories.

In this case, LV may argue that its well-known trademark deserves cross-class protection.

However, China's Trademark Law and related judicial interpretations clearly state that the recognition of a well-known trademark should follow the principles of "case-by-case determination" and "protection as needed".

Cross-class protection is justified only if there is evidence that the public would be misled and the registrant's interests are likely to be damaged. In this administrative proceeding, the court needs to determine whether CNIPA correctly applied this standard.

It is worth noting that the protection of well-known trademarks cannot extend indefinitely.

Even if some LV trademark symbols enjoy extremely high reputation, it does not automatically mean that every separately registered graphic element — particularly those resembling public cultural motifs — enjoys the same level of protection across all categories.

Judicial review should guard against "goodwill spillover", whereby a brand's overall reputation is indiscriminately poured into each registered element, thereby improperly extending the exclusivity of the trademark.

Although this is an administrative case, its ruling will have a significant effect on similar cases in the future.

The judgment should accomplish three objectives: First, it should strictly examine the source of distinctiveness of the disputed mark, distinguishing inherent distinctiveness from acquired distinctiveness, and ensure that the natural recognizability of public cultural elements is not mistaken for the trademark owner's original contribution.

Second, it should accurately apply the principle of "protection as needed" for well-known trademarks and prevent the abuse of cross-class protection.

Third, it should fully address public interest considerations in its reasoning, clarifying the protection boundaries for trademarks comprising public cultural elements and leaving adequate room for fair use by the public and other market entities.

A trademark right is essentially a tool for market identification, not a shackle on cultural resources.

As China continues strengthening intellectual property protection while fostering a fair and competitive business environment, safeguarding the public domain at the trademark authorization stage becomes increasingly important.

Traditional patterns, natural imagery, and geometric designs should remain part of humanity's shared treasury of creativity rather than become legal barriers enabling a handful of enterprises to monopolize markets.

The BIPC ruling may well provide a landmark answer on how China's trademark system can balance private incentives with public interest.

The author is a professor of International Law at Fudan University Law School.

The views don't necessarily reflect those of China Daily.

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