On December 30, 2019, the Beijing High Court upheld a judgment rendered by the Beijing IP Court, allowing the registration of Apple Inc.’s Face ID trademark “ ” (iconic apple device + face in Chinese Character + ID in Latin) on “computers, phones, 3D glasses” in class 9. 

“Face ID” is Apple's name for the technology, using a complex front-facing camera system and accompanying software to unlock the iPhone and authenticate purchases and payments with a mere glance. Such technology was first available on iPhone X and later on iPad Pro models and Mac computer. 

On September 12, 2017, Apple Inc. filed for the registration of this trademark (No. 26351410) with the China Trademark Office (CTMO) in class 9. On July 24, 2018, the application was rejected by the CTMO for lack of distinctiveness. The decision of refusal was maintained by the Trademark Review and Adjudication Board on January 14, 2019. The case was then appealed before the Beijing IP Court and thereafter the Beijing High Court. Both courts affirmed the distinctiveness of the litigious trademark.

The focus of this case is whether the trademark is devoid of distinctiveness for merely describing the functions and features of the designated products thus falls under the unregistrable circumstances as prescribed by Article 11 of China’s Trademark Law. 

The Beijing High Court held that as part of the litigious trademark, the applicant’s iconic apple device had been recognized as well-known in China and the relevant public would naturally associate the apple device with Apple Inc. Therefore, the litigious trademark is distinctive and is capable of serving as a source identifier, thus should be registrable. The High Court did not further comment on the distinctiveness of the word part “面容ID”. But the first instance court pointed out that the word part “面容ID” was a suggestive sign with distinctiveness, because it was created and firstly used by Apple and was not commonly used by practitioners of the same industry to describe the features of the designated goods. 

It is a typical case involving distinctiveness issue of a trademark including a strong distinctive part and a less distinctive part. Obviously, courts should take the trademark as a whole and conduct an overall examination.