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Intellectual Property

Trade Mark Reviews in China - Some Encouraging Successes

Benjamin Choi and Angel Luo 

29 Mar 2021

The general principles in determining whether a trade mark can be registered in China are to a large extent the same as in most other countries, considering China is also one of many jurisdictions in the WIPO Madrid International Registration system. Indistinctive or descriptive marks which fail to achieve registration in the European Union will probably have no chance of registration in China. Yet it does not mean that trade marks which are clearly distinctive and registered in most places around the world will naturally be accepted for registration in China because certain technical or special grounds can withhold registration, putting aside the relative ground due to existence of prior similar marks.

For example, a mark will likely have its registration declined in China if it comprises a country name or any foreign geographical name widely known to the public. During the course of substantive examination, the Examiner may not look at every aspect to find out if the relevant name has any other meanings or references in the whole context of the mark. Upon refusal, the Applicant will have to resort to the review process to explain and justify that the mark in its entirety can satisfy the requirements for registration.  

There are 3 scenarios where a mark comprising a geographical name may be registered: -

  1. the name has another meaning
  2. the name forms part of a collective or certification trade mark
  3. the name is not a dominant element of the mark and it only serves to indicate the corresponding place of origin of the applicant    

Marie France Van Damme

Fashion designer Marie France Van Damme uses her own personal name for branding purposes and has been trading under the mark  . However, this was initially declined for registration in Class 25 for “clothing” in China because of the word “FRANCE” within the trade mark. Ms Van Damme succeeded in the review by convincing the review adjudicator that the word “France” is generally perceived by consumers, in the context of her brand, as the name of a living person instead of referring to the country of France.  

URAL

The mark  was initially declined for registration in Class 9 for “loudspeakers” in China because of the word “URAL” in the mark being associated with the Ural Mountains located along the East European and West Siberian plains. The applicant succeeded in the review by convincing the review adjudicator that the word “URAL” can also be a surname and a specie of owl. The evidence of pre-application use of the mark by the extensive sales of the goods in China might have supported this case.  However, as it is not expressly entered as a condition of registration in China whether or not a mark has been granted based on acquired distinctiveness through use, such unreported precedent gives us a useful hint or guidance that this approach can work in some cases.    

Car And Driver

Suggestive marks are often just categorically seen as descriptive marks in China.  The application for   was initially declined registration in Class 4 for ‘fuels’ as the words ‘CAR’ and “DRIVER” seem closely associated with the products of “fuels” for automobiles but if we look at these words more carefully, they are not directly connected to the essential characteristics and functions of the goods. The Applicant succeeded in the review by convincing the review adjudicator that the mark as a whole is not directly descriptive of the goods sought to be registered and it is capable of functioning as a trade mark to indicate the source of origin of the goods.  

China has a tremendously high number of trade mark applications filed on a daily basis. We just need to bear with a reasonable degree of discrepancy, fluctuation and inconsistency between different examiners in assessing the inherent registrability of a trade mark. The good news is we can always rely on the review mechanism to share our views and analysis with the more senior examiners to reassess whether a mark, which is usually unique on its own, can satisfy the requirements for registration as laid down in the Trade Mark Law. We are seeing good progress as China becomes more aligned with rest of the world in the administration of the trade mark regime.  


 

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