Recently, the Beijing Intellectual Property Court concluded the case that CSI Index Co., Ltd. v. Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Review and Adjudication Board) rejected the reexamination of the trademark application of "CSI 3 Index". After trial, Beijing Intellectual Property Court held that "Shanghai-Shenzhen 3 Index" was remarkable after use and could be registered, and revoked the sued decision made by the Trademark Review and Adjudication Board not to approve the registration of the trademark of "Shanghai-Shenzhen 3 Index". The sharp turn of the case has led to further discussion on the criteria for judging the significance of descriptive marks through use.

some people think that the relevant public can form a fixed or close connection between a specific commodity and a specific provider through the logo, and it can be considered that the significance is obtained through use. For example, in the case of "WESTLAW", the people's court held that the relevant public engaged in legal study, research and practice have closely linked "WESTLAW" with the legal database provided by the plaintiff, and will not understand it as a vocabulary to describe the characteristics of the legal services and legal research services it provides, which has the function of marking the source of the above services and conforms to the provisions of Article 11, paragraph 2, of China's current Trademark Law.

There is also a view that a logo can only be regarded as distinctive if it needs to obtain the trademark meaning through use, and the trademark meaning is stronger than the inherent meaning. For example, in the case of "spray gun", the people's court held that a mark without inherent distinctive features is considered to have distinctive features only if it brings consumers a sense of trademark through its use, and this awareness is stronger than the inherent meaning of the mark. In view of the fact that the inherent meaning of such signs is well known to consumers, only when the use of such signs in the sense of trademarks reaches the level that consumers are familiar with, can consumers have a stronger cognition in the sense of trademarks than its inherent meaning.

the author thinks that in order to reasonably grasp the criteria for judging the distinctiveness of descriptive marks through their use, we should first clarify the reasons for restricting the use of descriptive marks as trademarks. On the one hand, the reason why the first paragraph (2) of Article 11 of China's current Trademark Law restricts the registration of descriptive marks as trademarks stems from significant considerations. When descriptive marks are used in goods or services, consumers usually think that they are descriptions of the corresponding characteristics of goods or services, rather than trademarks, which cannot give full play to the function that trademarks should have to distinguish one provider from other providers. On the other hand, based on the consideration of horizontal competition, descriptive marks are well-known and common expression symbols of horizontal competitors. If a specific subject is allowed to register them as trademarks, it will hinder the proper use of other operators. Therefore, if a descriptive mark wants to gain distinctiveness through use, it must enable consumers to recognize the mark as a trademark and distinguish the sources of goods and services through the mark. That is to say, to judge whether a descriptive mark has acquired distinctive features through use, it should be based on whether the mark has actually been used and established a unique and stable relationship with the users, so that the relevant public can distinguish the sources of goods or services through the mark.

specifically, in the case of the rejection and reexamination of the trademark application of "Shanghai-Shenzhen 3 Index", the people's court pointed out that to judge whether a descriptive mark has acquired distinctive features through use, it should be based on whether the mark has actually been used and established a unique and stable connection with the user, so that the relevant public can distinguish the service sources through the mark. Subsequently, the people's court made a specific judgment from two aspects: the main body of the use of the "Shanghai and Shenzhen 3 Index" and the relevant public cognition.

first of all, from the perspective of users, CSI Index Company exclusively compiles and publishes the "Shanghai-Shenzhen 3 Index", and other third parties are not allowed to use this index without the authorization of CSI Index Company. The trademark in dispute has a unique and stable orientation objectively, allowing the trademark in dispute to be registered, and will not cause damage to the operators in the same industry.

Secondly, judging from the cognition of the relevant public, on the one hand, through the sales license and promotion of the CSI 3 Index by the CSI Index Company, the relevant public has closely linked the CSI 3 Index with a series of financial services based on the CSI 3 Index provided by the CSI Index Company, instead of just recognizing it as the CSI 3 Index itself; On the other hand, after a long period of extensive use and publicity, the trademark in dispute has made the relevant public closely contact it with the China Securities Index Company, with a unique and stable directivity. Accordingly, the people's court believes that the evidence on file can prove that the disputed trademark "Shanghai-Shenzhen 3 Index" has acquired remarkable characteristics after use and can be applied for registration as a trademark.