Weekly China Trademark News Updates

February 22, 2022

CNIPA answers the frequently asked questions regarding the Trademark Adjudication and Examination Guideline

Part I – Adjudication and Examination of Trademark Distinctive Features

1. How is trademark distinctive features adjudicated?

The types of “other lack of distinctive features” stipulated in Article 11(i)(3) of the Chinese Trademark Law gradually increases. To meet new technologies and new business formats developments, the Trademark Adjudication and Examination Guidelines (“Guidelines”) comprehensively summarizes practical experiences of trademark examinations in recent years, which refines and supplements “other lack of distinctive features” that are more common in practice:

First, modify the distinctiveness determination of packaging, container, or decorative pattern of the goods designated by the trademark. The Guidelines further clarifies that the outer packaging of goods where “consumers will not generally regard it as a trademark that distinguishes the source of goods or services” does not have distinctive features of a trademark, and the container or decorative patterns of the goods themselves do not have distinctive features of a trademark.

Second, in practice, “commonly spoken words,” “Internet buzzwords and popular emoji packs,” and “aphorisms” are part of the public’s daily expressions and do not have distinctive features that a trademark should have.

Third, marks that “only contain the full name of an applicant (excluding natural persons),” “commonly used symbols,” and “festival names” are difficult to be identified as trademarks and lack distinctive features that trademarks should have. Common signs and symbols include a variety of those used in daily life or work. Festive names include not only the legal festival names, but also customary ones.

The Guidelines, however, cannot exhaustively enumerate all situations in which a sign “lacks distinctive features.” As for whether a certain sign lacks distinctive features, it is still necessary to make a case-by-case judgment in light of the actual situation.

2. How to determine distinctiveness if a mark is used as the full name of its corporate name?

Generally speaking, if there is only the full name of an applicant (excluding natural persons), it does not have distinctive features that a trademark should have, except for those with graphics and other elements that make the entire mark have distinctive features.

But it is worth noting that in recent years, more and more universities, research institutes, hospitals, social groups and other institutions or other organizations have registered their full names as trademarks. The brand value of its name increases the use of intangible assets. The full names of some institutions or organizations have been used for a long time and have a high reputation, and have created a one-to-one correspondence with the goods or services actually used by the relevant institutions or other organizations, which will not cause confusion and misunderstanding to consumers. Such marks can be used to distinguish the source of goods or services provided and shall be deemed to have distinctive features of a trademark.

3. Why amend the distinctiveness determination criteria for trademarks containing signs that do not have distinctive features?

The second part of the “Examination of Distinctive Features of Trademarks” in the outdated Trademark Adjudication and Examination Standards stipulates that a trademark is composed of signs and other elements that do not have distinctive characteristics. If other elements or the trademark as a whole can play the role of distinguishing the source of goods and services, that trademark has distinctive features.

However, in practice, if a trademark is composed of a design and a text, independently, where the design has certain distinctive features but the text lacks distinctive features, if directly determined such mark has distinctive features just because the design has distinctive features would create a series of problems. First, this determination method is contrary to the principle of overall determination of trademark distinctiveness and would easily create ambiguity as to the scope of trademark protection. Second, in practice, some trademark registrants use such trademarks on e-commerce platforms for the purpose of blackmailing or filing malicious infringement complaints. Third, this standard is also inconsistent with the current practice of trademark authorization and confirmation. In relevant trademark administrative or judicial cases, it is generally believed that a trademark is composed of design or text alone, and the text part is the dominant part of the trademark. If the text part lacks distinctive features, the entire trademark shall be deemed to lack distinctive features.

Therefore, after sorting out and summarizing relevant cases, soliciting opinions from courts and scholars at all levels, and rounds of discussions, the Guidelines updated the standard for determining trademark distinctiveness containing signs that do not possess distinctive features by clearly stating that “if a trademark is composed of an independent text part and other independent where the text part does not have distinctive features, the entire trademark shall be deemed to lack distinctive features.” At the same time, in order to fully protect the rights and interests of applicants and regulate the conduct of trademark adjudication and examination, the Guidelines points out, “If other elements have strong distinctive features, and the trademark registration department believes that it is possible to distinguish the source of goods or services based on these elements, it may issue an examination opinion requiring the applicant to give up the exclusive right to the part lacking distinctive features. If the applicant does not give up or fails to respond to the examination opinion within the prescribed time limit, its application for trademark registration shall be rejected.”

Part II – Adjudication and Examination of Well-Known Mark

1. What changes are made to the evidentiary requirements for the recognition of well-known trademarks?

The well-known mark determination part of the Guidelines has updated the scope of submission of some evidence, use evidence formed by non-traditional business methods and non-traditional media are now recognized. Additional forms of evidence submission are allowed according to the situation. For example: in addition to traditional evidence such as contracts, invoices, bills of lading, bank receipts, import and export certificates, etc., relevant materials such as online e-commerce sales records are added as evidence of trademark use. When examining relevant evidence of geographical areas of sales, point of sales, sales channels and methods, traditional business methods and non-traditional business methods are included. When reviewing media advertisements, comments, reports, rankings and other promotional materials, traditional media and non-traditional media, etc. are included. When reviewing tax payment for relevant evidence, in addition to the original tax payment certificate issued by the tax authority and the notarized copy of the tax payment certificate, a notarized electronic version of the tax payment certificate printed copy is now allowed.

2. What other amendments to the “Guidelines” concerning the recognition of well-known marks should applicants and agents pay attention to?

First, provisions on the re-protection of well-known marks that have been previously identified have been added, which added specific conditions for application. Evidence materials that the well-known trademark holder needs to submit when requesting to re-protect a well-known mark are also added. In particular, evidence during the time when the mark was protected as a well-known mark and other relevant evidence should be submitted.

Second, the definition of “translation” of other’s well-known mark is refined based on practice. If the disputed trademark expresses another’s well-known mark in different languages, and if those languages have established a corresponding relationship with that other’s well-known mark and are well known or used by the relevant public, such translated mark constituted as a “translation” as stipulated in Article 13(ii) of the Chinese Trademark Law. If such use of the words in another language is likely to make the relevant public mistakenly believe that it has a considerable degree of connection with the well-known trademark of others, such mark shall also be deemed as a “translation.”

Third, no longer make a clear distinction between “confusion” and “misleading,” and to combine the description of “specific situations,” so as to better meet the requirements of trademark examination and adjudication practice.

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