The Trademark Identification

Company S applied for trademark registration with the combination of the Chinese character “没事儿” and a circular pattern. The Trademark Review and Adjudication Board (“TRAB”) rejected the application. Company S applied for a review with the reason that the sign had certain originality; however, TRAB rejected Company S’s application for the review in accordance with item 3, paragraph 1 of Article 11 of the “Trademark Law”, which says the sign is lack of distinctiveness. Company S filed a lawsuit against TRAB later then, after the first and second instance, Beijing High People’s Court rejected Company S’s claim. (See (2016) Jing Xing Zhong No.4148)

In practice, similar cases are not rare. While applying for trademark registration, normally, many companies would focus on whether there is a similar registered trademark acquired by others, but ignore the identification (or distinctiveness) of a registered trademark.

According to Article 9 of the “Trademark Law”, the trademark for registration shall be distinctive for easy identification, and may not be in conflict with any prior legal rights acquired by others. In view of this, if a trademark for registration is lack of distinctiveness, normally the application would be rejected by TRAB.

Then how to identify whether the trademark for registration is lack of distinctiveness or not?
Article 11 of the “Trademark Law” has prescribed 3 categories of signs which shall be deemed as lack of distinctiveness. The 3 categories are, (1) a sign only bearing the generic name, design, or model of the goods; (2) a sign only directly indicating the quality, main raw materials, functions, uses, weight, quantity, or other features of goods; and (3) other signs lacking distinctiveness. The “Trademark Examination and Review Standard” has further interpreted the distinctiveness as the features that a trademark should possess to enable the relevant public to distinguish the origin of goods.

In judicial practice, the above standard has been applied in many cases.

Take the case in the beginning of this article for example, the Beijing High People’s Court held that the distinctive part of the trademark is the Chinese character “没事儿”, which is a term used in daily life, it is difficult for the relevant public to identify the origin of the service with this trademark, so the trademark is lack of distinctiveness, and could not be used to distinguish different service providers. Although Company S claimed that the trademark was special designed, and had originality, however, the originality from the perspective of copyright did not equal to the distinctiveness of a trademark which should have the function on distinguishing the origin of goods.

Regarding the dispute on whether descriptive elements would affect the determination of the distinctiveness of the relevant signs, the Supreme People’s Court has given a firm answer. Article 7 of the “Regulations on Several Issues Concerning the Trial of Administrative Cases Involving the Granting and Confirmation of Trademark Rights” stipulates that if a trademark sign includes descriptive elements but these do not affect its overall distinctiveness, or if the descriptive sign is presented in a unique way so that the relevant public is able to identify the origin of the goods, then the court should rule that the trademark sign has distinctive characteristics. In judicial practice, many judgments held the same opinion, such as (2016) Jing 73 Xing Chu No.579.

In the case (2016) Jing Xing Zhong No.4442, Beijing High People’s Court points out that while determining whether a sign could enable the relevant public to distinguish the source of goods, the following factors shall be taken into consideration.

The factors include, (1) the elements of the sign itself, such as its meaning, pronunciation, and appearance; (2) the designated goods or service; (3) the cognitive habits of the relevant public; and (4) the actual use of the sign in the relevant industry, and so on. In addition, the correlation between the relevant signs and the designated goods could also be taken into consideration, if the degree of correlation is higher, then the distinctiveness of the signs is lower, and vice versa. (Quoted from (2016) Jing 73 Xing Chu No.579)

Therefore, the key factor in determining whether a sign has the distinctiveness is that whether the relevant public could take the sign as a trademark, and use the sign to distinguish the origin of goods. However, the distinctiveness of a sign is changeable; it would be affected by the actual use. The “Trademark Law” has prescribed an exception in Article 11, which says if a sign listed in the preceding paragraph has obtained distinctiveness through use and can be easily identified; it may be registered as a trademark. For example, “美标” is a typical case. On the contrary, if a sign is distinctive, but due to the widely use, it becomes the generic name of specified goods, then it loses the function to distinguish the origin of the goods, and it shall not be protected as a registered trademark. For example, “U盘” is a typical case.

In summary, while applying for trademarks, it is recommended to avoid use the signs which are lack of distinctiveness, such as the term in daily life, the generic name, the name of raw materials, the functions of the goods and so on. In addition, it is recommended to design the common fonts, by which the sign would be more creative and designable, and it would be more possible to pass the review of TRAB.