Color Matters: Beijing IP Court Upholds Rights In Color Combination Mark Against Infringer

The Beijing IP Court issued a decision upholding a Swedish company’s trademark rights in its blue and black color combination mark for cables and pipe sealing products. This decision reminds us that it is important to register unique and distinctive colors that the Chinese consumers use to recognize and differentiate products. It is equally important to accurately describe in the trademark application how the colors will be used in commerce.

Roxtec AB (“Roxtec”) registered its color combination mark (displayed below) with the China Trademark Office under Reg. No. 11915216.

(Roxtec’s Registered Mark)

In its registration, Roxtec describes its color mark as “concentric black circles on a blue background.” Roxtec has sold cables and pipe sealing systems in China since 2008. 

Roxtec’s competitor, American company Seagull Scientific Inc. (“Seagull”) started selling pipes in China in 2007 under its Chinese subsidiary, MS-Cisco. Seagull registered the word mark MS-CISCO in China to use with its pipes. However, Seagull’s MS-CISCO branded pipes had cross sections (displayed below) that matched the description of Roxtec’s mark in its registration:

(MS-Cisco’s Infringing Product).

Roxtec sued Seagull for trademark infringement in the Beijing IP Court. In response, Seagull counterclaimed to cancel Roxtec’s registration on two grounds: (1) that Roxtec did not use the mark as registered, and (2) that Roxtec’s blue and black color combination mark did not acquire distinctiveness because these colors had been commonly used in the piping and cabling industries. The Beijing IP Court ultimately rejected both counterclaims and found Seagull liable for trademark infringement.

In proving its case, Roxtec first submitted evidence (displayed below) to show that it used the mark as described in the registration:

(Roxtec’s Actual Product).

Accordingly, the Beijing IP Court dismissed Seagull’s counterclaim that Roxtec did not use the color combination mark “as registered.” In reaching this decision, the Beijing IP Court emphasized that mark descriptions defined the scope of protection afforded in China to color combination marks. Because Roxtec used its color combination mark as described in its registration, it is entitled to maintain the registration and to the rights associated with that registration.

Second, Roxtec submitted its sales records, advertising and promotional materials, awards, media mentions, industry survey results, and declarations by twenty-seven third parties in the machinery industry to support Roxtec’s claim that its mark had acquired distinctiveness for pipe and cable products in China. The Beijing IP Court agreed with Roxtec that its mark had acquired secondary meaning and accordingly dismissed Seagull’s other counterclaim.

Finally, the Beijing IP Court ruled that Seagull had infringed Roxtec’s registered color combination mark, granted a permanent injunction against Seagull’s use of the infringing products, and awarded Roxtec monetary damages in the amount of approximately US$70,000.

This case is MS Cisco (Shenzhen) Technologies, Ltd. v. Roxtec AB, Case number (2019)京73民终2736号.