HongFangLaw ~ Chinese IP Law Updates ~ n’ 54
16 April 2018
A Brief Analysis of the “JIAO GE YA ZI” Case
Second-instance court: “JIAO GE YA ZI” (“order a duck”) shall not be interpreted beyond its literal meaning
First-instance judgment: No. (2017) J73XC2359
Second-instance judgment: No. (2017) JXZ3393
Appellant (plaintiff at first instance): Beijing Wei Mei Qu Xiang Catering Management Co., Ltd.
Appellee (defendant at first instance): Trademark Review and Adjudication Board (TRAB) of State Administration for Industry and Commerce (SAIC)
In September 2014, Beijing Wei Mei Qu Xiang Catering Management Co., Ltd. (“WMQX Co.”) was established. 2 months later, it filed for registration of the trademark “JIAO GE YA ZI” with the China Trademark Office (CTMO) who subsequently issued a notice of its decision to reject the application in April 2016. WMQX Co. attempted an appeal for review but failed to get its trademark through, and eventually brought the case to the Beijing Higher People’s Court.
CTMO & TRAB:
“JIAO GE YA ZI” has vulgar implications prone to cause bad social influence.
The trademark in dispute comprises the text “JIAO GE YA ZI” and a cartoon of a duck. Generally, “YA ZI” refers to a domestic bird but is also used to address “male prostitutes” in subcultural contexts. The latter interpretation has no place in mainstream cultures and values and thus is not allowed to be spread as a trademark. Combined with the designated services “bar services; accommodation bureaux [hotels, boarding houses]” etc. in the application, the words “JIAO GE YA ZI”, which means “order a duck (male sexual worker)”, is expected to further associate the trademark with the inappropriate perception among the relevant public, thereby giving rise to ill effects in the society.
Second-instance court with an opposite opinion:
The public usually perceives “YA ZI (duck)” in general terms. Therefore, it is quite unlikely that consumers will overly interpret “JIAO GE YA ZI” under normal circumstances. The lower court’s understanding of the trademark as low-class does not necessarily represent the public’s thinking. In summary, there will not be adverse influence caused by the registration and use of the trademark in question with its designated services.
It is stated in Article 10.1.8 of the Trademark Law that, “The following signs shall not be used as trademarks: those detrimental to socialist morality and custom or having other ill effects.” For the purpose of this provision, “ill effects” are those arising from the registration and use of a trademark that may do harm to ethical norms or impose negative impacts on public interests and social order concerning the nation’s politics, economy, culture, religion?and?ethnicity.
Interpretation of trademark has long been an issue in the department. To reach a consensus on a trademark’s generally accepted meaning, it is considered that multiple facets should be examined based on how a case unfolds, including the cognition of the general public or relevant consumers, the primary meaning of a trademark is preferred to its other connotations, social and commercial custom, the contemporary way of thinking, possible broadening or alienation of the meaning etc. However, in today’s society overflowing with diversified values, varying opinions exist as to what the public generally thinks and further imagines. Meanwhile, the definition of “ill effects” is unlikely to be as objectively precise as to articulate where it goes and ends.
That is why the second-instance court’s opinions on what “JIAO GE YA ZI” means turn out to be opposite to those of the CTMO, the TRAB, and the lower court. A takeaway from this case is that a trademark applicant could eventually reverse a refusal decision by staunchly but wisely resorting to every means available. On the other hand, the quest could be time-consuming – 4 years in the case of “JIAOGE YA ZI”. While its?applicant?has been using the trademark and thereby building up some reputation in the market, it would still be vulnerable if any trademark infringement committed by its competitors occurred. For this reason, companies in the same situation should also consider new trademark applications and advertising strategies as a second plan as they seek for protection of their trademark rights.
It is also notable that, WMQX Co. has taken steps accordingly to avoid risks even after the favorable second-instance judgment was delivered. It has applied to the CTMO to remove the services “hotels” and “bar services” from its trademark application and changed its slogan from “Bring some fantasy to your life.” to “Add a dish to your table.” This is an example of how the public may negatively interpret of “JIAO GE YA ZI” when seeing it related to such services.
Trademark registration is core to establishing an enterprise’s brand. Yet only wholesome brand images are sustainable in the long term as an enterprise develops. For advertising considerations, an enterprise may be inclined to get attention by using sensational trademarks. It is reasonable as public attention drawn to stunts can sometimes be turned into huge benefits, but what wins over consumers for growing a stronger brand is never hype but quality products and satisfactory services.
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