By Ms. Jin Chen, Chofn IP
In China, like in most other jurisdictions, a trademark needs to be distinctive for registration. In other words, an indistinctive element cannot be registered as a trademark. However, if a word or words is not distinctive but the applicant adds some device, can the newly designed trademark become registrable in China?
I would like to answer this question through some specific examples according to the China National IP Administration's (CNIPA) criteria and the Chinese courts'rulings.
CNIPA's criteria:
If a trademark onsists of indistinctive characters and it is difficult for the public to identify the source of goods or services through the other elements or the whole trademark, the trademark shall be deemed as lack of distinctive features. For example:
|
(The Chinese characters “纳米” mean nanometer.) |
(The Chinese characters “满汉全席” mean Manchu Han Imperial Feast.) |
|
Designated goods: Clothes |
Designated services: Restaurant services |
However, if the other elements or the trademark as a whole can identify the source of goods or services, the trademark shall be deemed as distinctive. For example:
|
(The Chinese characters “纳米” mean nanometer.) |
(The Chinese characters “满汉全席” mean Manchu Han Imperial Feast.) |
|
Designated goods: Nano clothes |
Designated services: Restaurant services |
Case study:
i. The trademark as a whole is regarded as distinctive.
Case 1: Trademark "
" No. 6180690, computer software for foreign language learning in class 9.
The word part "Language Learning Success" of the above trademark is descriptive on the designated goods, and the blue device part alone is already a registered trademark. The second-instance court finally recognized the distinctiveness of the whole trademark.
Case 2: Trademark "
" No. 10954898, communications by computer terminals, providing internet chat rooms, etc. in class 38.
The above trademark is Sina Weibo's VIP logo. The CNIPA held that this trademark meant very important person which directly indicated the service object and rejected the application. The first-instance court ruled that the special design and bright color had made the trademark distinctive enough as a whole and recognized that the trademark had obtained certain reputation through use. So this trademark was approved of registration.
Case 3: Trademark "
" No. 3909917, sales promotion for others, import-export agency services in class 35.
This is a typical trademark administrative case of the Supreme People's Court (SPC). Although the word part "BEST BUY" is descriptive, the SPC considered the fact that the trademark also had a label logo and bright color. Moreover, the trademark has a high reputation in the world and has already been used in China. Finally, the SPC recognized the distinctiveness of the whole trademark.
ii. The trademark as a whole is regarded as indistinctive.
The following trademarks were finally regarded as indistinctive by the CNIPA and the court and failed to mature into registration.
|
No. 7315177, Class 31: Cat habitat. |
No. G1118241, Class 11: Lighting apparatus, etc. |
|
No. 13546790, Class 9: Measuring apparatus, etc. |
No. 10516213, Class 44: Public health bath, Massage, etc. |
|
No. 1297668, Class 9: VR software. |
No. G846106, Class 3: Cosmetics, etc. |
|
No. 15005034, Class 5: Medicinal drinks, Nutritional supplements. Note: The owner also has two registrations for the device part “ |
|
(The Chinese characters "
” No. 15005979 and the word part “
” (the Chinese characters “Summary:
When judging the distinctiveness of a trademark containing descriptive words and other device elements, we should consider two points. The first one is distinctiveness of the whole trademark, rather than merely the device. A registered device trademark cannot certainly make a trademark containing descriptive words distinctive enough as a whole. We should make judgment based on the overall appearance. The second one is the reputation of the trademark. The higher the reputation is, the more distinctive it is.
