Repot Q181

Conditions for registration and
scope of protection of non-conventional trademarks

in the name of AIPPI Chinese Group

by Nina Lucy Liu

1. How is the scope of what constitutes a registrable trademark defined? Does that definition list specific examples of permissible types of trademarks?

The definition of a trademark means “Any visual sign capable of distinguishing the goods or service of one natural person, legal person or any other organization from those of others, including words, devices, letters, numerals, three-dimensional symbols, combinations of colors or any combination of the above elements may be applied for the registration of a trademark” under the China Trademark Law. Although the definition does not list any specific examples of permissible types of trademarks the Law regulates the “non-registrable” ones in Articles 10, 11 & 12. (Q1)

2. What categories of signs are capable of registration as a trademark? Are any categories of signs excluded from registrability as a trademark?

Please refer to our answers to Question No. 1 for the categories of signs registrable as a trademark in China. According to Articles 10, 11 & 12 of the China Trademark Law, “The following words or devices shall not be used as trademarks: (1) those identical with or similar to the State name, national flag, national emblem, military flag, or decorations, of the People’s Republic of China; and those identical with the names of particular venues where the central state governmental organizations are located, or with the names or graphs of the symbolic buildings of the central state governmental organizations; (2) those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries, except that consent has been given by the relevant country’s government; (3) those identical with or similar to the names, flags, or emblems of international intergovernmental organizations, except that consent has been given by the relevant organization or that the use is unlikely to mislead the public; (4) those identical with or similar to the official signs and hallmarks indicating control and warranty, except that the use thereof is otherwise authorized. (5) those identical with or similar to the names or symbols of the Red Cross or the Red Crescent; (6) those having the nature of discrimination against any nationality; (7) those having the nature of exaggeration and fraud in advertising goods or services; (8) those detrimental to socialist morals or custom, or having other unhealthy influences. The geographical names of the administrative divisions at or above the County level and the foreign well-known geographical names shall not be used as trademarks, but such geographical names as having otherwise meanings or as an element of a collective mark or a certification mark shall be exclusive. Where a trademark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid.” “The following signs shall not be registered as a trademark: (1) those which consist exclusively of generic names, designs or models of the goods in respects of which the trademark is used; (2) those which consist exclusively of signs or indications that have direct reference to the quality, main raw material, function, intended purpose, weight, quantity or other characteristics of goods or services; (3) those which are devoid of any distinctive character. Where trademarks under the preceding paragraphs have acquired distinctiveness through use and become easily distinguishable, they may be registered as trademarks.” “Where a three-dimensional sign is applied for the registration of a trademark, it shall not be registered if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.”

Additionally, in the Chinese trademark practice the marks of sound and smell are specifically excluded from registration. For the registration of a single color trademark the China Trademark Office would mostly refuse the application on the basis of non-distinctiveness.(Q2)

3. Where applications to register a colour per se or a combinaton of colours per se may be accepted for registration:

3.1 in relation to goods, is such an application acceptable if it does not specify the outline, contours or proportions in which or the shape or object to which the colour is to be applied;

As for a combination of colours per se it could usually be registrable as a trademark in China. In relation to goods an application is acceptable if it does not specify the outline, contours or proportions in which or the shape or object to which the colour is to be applied provided it is distinctive.(Q3.1)

3.2 is such an application registrable in relation to services and, if so, under what conditions:

Yes. An application is registrable in relation to services under the conditions that it is distinctive.(Q3.2)

3.3 is an applicant required to file a sample of the colour(s) applied for and / or a colorimetric reference or other colour code;

Yes. An applicant is required to file five samples of the colour for the application.(Q3.3)

3.4 can the mark be considered inherently distinctive in relation to certain goods or services;

Yes. The mark can be considered inherently distinctive in relation to certain goods or services.(Q3.4)

3.5 will the mark only be accepted for registration after de facto distinctiveness acquired through use has been shown;

For a single color trademark it cannot be applied for registration, however a trademark of combination of colors may be applied for registration according to Article 8 of Chinese Trademark Law. (Q3.5)

3.6 are certain colors denied registration on the basis that there is a need to keep them free for general use; and

There are no colors denied registration on the basis that there is a need to keep them free for general use.(Q3.6)

3.7 to what extent do other visual aspects of the way the mark is used affect the assessment of the distinctiveness of the mark?

There is no other visual aspects of the way the mark is used would affect the assessment of the distinctiveness of the mark except of those regulated in Articles 10, 11 & 12 of the Trademark Law.(3.7)

4. Where applications to register three-dimensional signs may be accepted for registration:

4.1 what form of representation of the three-dimensional sign is accepted as part of the application for registration;

For the applications to register three-dimensional signs in China, five pictures/photos of the 3D design would be accepted as the form of representations for the application.(Q4.1)

4.2 what are the criteria for assessing whether the three-dimensional sign can be considered capable of distinguishing the goods or services of one undertaking from those of another;

“Where a three-dimensional sign is applied for the registration of a trademark, it shall not be registered if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.”(Q4.2)

4.3 what are the criteria for assessing whether the three-dimensional sign can be considered inherently distinctive in relation to certain goods or services;

“Where a three-dimensional sign is applied for the registration of a trademark, it shall not be registered if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.” (Q4.3)

4.4 will the mark only be accepted for registration after de facto distinctiveness acquired through use has been shown;

The registration of 3D mark would be based on individual case. However, the application could, for most cases, be accepted straightforward without acquiring the distinctiveness through the use.(Q4.4)

4.5 are certain shapes denied registration on the basis that there is a need to keep them free for general use;

Yes. The Law stipulates certain shapes denied of registration on the basis that there is a need to keep them free from general use. It regulates “The following words or devices shall not be used as trademarks: (1) those identical with or similar to the State name, national flag, national emblem, military flag, or decorations, of the People’s Republic of China; and those identical with the names of particular venues where the Central State government organizations are located, or with the names or graphs of the symbolic buildings of the Central State government organizations; (2) those identical with or similar to the State names, national flags, national emblems or military flags of foreign countries, except that consent has been given by the relevant country’s government; (3) those identical with or similar to the names, flags, or emblems of international intergovernmental organizations, except that consent has been given by the relevant organization or that the use is unlikely to mislead the public; (4) those identical with or similar to the official signs and hallmarks indicating control and warranty, except that the use thereof is otherwise authorized. (5) those identical with or similar to the names or symbols of the Red Cross or the Red Crescent; (6) those having the nature of discrimination against any nationality; (7) those having the nature of exaggeration and fraud in advertising goods or services; (8) those detrimental to socialist morals or customs, or having other unhealthy influences. The geographical names of the administrative divisions at or above the County level and the foreign well-known geographical names shall not be used as trademarks, but such geographical names as having otherwise meanings or as an element of a collective mark or a certification mark shall be exclusive. Where a trademark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid.” “The following signs shall not be registered as a trademark: (1) those which consist exclusively of generic names, designs or models of the goods in respects of which the trademark is used; (2) those which consist exclusively of signs or indications that have direct reference to the quality, main raw material, function, intended purpose, weight, quantity or other characteristics of goods or services; (3) those which are devoid of any distinctive character. Where trademarks under the preceding paragraphs have acquired distinctiveness through use and become easily distinguishable, they may be registered as trademarks.” “Where a three-dimensional sign is applied for the registration of a trademark, it shall not be registered if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.”(Q4.5)

4.6 to what extent do other visual aspects of the way the mark is used affect the assessment of the distinctiveness of the mark; and

The claim of colors for a three-dimensional sign would usually enhance of the chance of success of registration especially when a trademark of less distinctiveness is concerned. (Q4.6)

4.7 to what extent do technical or functional considerations prevent registration?

“Where a three-dimensional sign is applied for the registration of a trademark, it shall not be registered if it consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.”(Q4.7)

5. Where applications to register smells may be accepted for registration:

5.1 what form of representation or description of the smell is accepted as part of the application for registration;

5.2 how is the capacity of the smell to function as a trademark and/or its distinctiveness assessed; and

5.3 how is the mark made available to the public on publication of the trademark application and thereafter?

6. Where applications to register a sound mark may be accepted for registration:

6.1 what form of graphical representation of the mark applied for is required as part of the application for registration;
6.2 can audio recordings of a sound mark be filed as part of the application for registration; and
6.3 if such audio recordings are filed as part of the application for registration, how are these recordings made available to the public on publication of the trademark application and thereafter?

7. Where applications to register moving images or holograms may be accepted for registration:

7.1 what form of representation of the moving image or hologram is accepted as part of the application for registration; and

7.2 how is the moving image or hologram made available to the public on publication of the trademark application and thereafter?

8. How is the scope of protection of "non-conventional" trademarks assessed? In particular, are registrations for "non-conventional" trademarks treated any differently than registrations for "traditional" forms of trademark either in substantive or procedural terms?

There is no legal definition of “non-conventional” trademarks in Chinese laws and regulations. Such a concept is treated as referring to various styles of trademarks such as “three-dimensional”, sound, smell marks & etc. The substantive and procedural examinations for the now non-conventional trademarks i.e. 3D shape and combination of colors per se are basically the same as those of other forms of trademark in China.(Q8)

However, for other future forms such as sound, smell and moving image mark examinations the procedures could be much different from those nowadays. Especially for the smell marks the examination must be required to be able to tell the difference of one kind of smell from another as the rule of “first-apply, first-registered” is concerned in China. The technical requirements would be changed, so are the publication, opposition, dispute, appeal and counter-appeal procedures.

9. To what extent is assessment of the registrability of "non-conventional" trademarks influenced by issues relating to enforcement and the scope of protection which should be afforded to those marks?

The registrability of “non-conventional” trademarks are assessed on the basis of the distinctiveness and “first-apply, first-registered” rules under Chinese trademark laws. And most of them are not registrable or not regulated under current Chinese laws because the government does not think it well enforceable or administrated. (Q9)

10. To what extent is the assessment of the registrability of "non-conventional" trademarks influenced by the fact that there may be a limited number of certain "non-conventional" marks (such as colors or shapes) available for general use?

Chinese practices usually evaluate the fact of the limitation of elements when, for example, examining the trademark of colors. The single color trademark would usually encounter office actions or rejections when it is considered non-distinctive. However, the combination of colors and the combination of color & device, word or other graphic elements could easily be granted registration.(Q10)

11. To what extent is the assessment of the registrability of "non-conventional" trademarks influenced by the fact that consumers may be less used to understanding "non-conventional" marks as an indicator of origin?

We do not think the Chinese practices would much evaluate the fact that consumers may be less used to understanding non-conventional marks as an indicator of origin during the examination. However, the Chinese examination practices would evaluate each individual case from the aspect of distinctiveness according to the current laws and regulations. (Q11)