HongFangLaw ~?Law Updates ~ n’ 83
10 May 2019

What trademarks may be rejected for “negative effects”?

Co-Author: Betty Chen, Shirley Lin

As the number of trademark filings soars while the examination period continues to be shortened, examiners’ work is increasingly intensive and difficult, which in turn takes a toll on the odds of the registration. In response, trademark applicants usually run a check for similar prior marks to avoid possible obstacles. However, this is far from enough. A distinct application could still risk refusal by trademark administrations if it is found to have negative effects.

Neither is such a reject allowed to be used as a trademark by law.

Case Examples

No. 1

The application No. 20736191 (粘花惹草[ZHAN HUA RE CAO]) filed by Haozhou Zhixintang Medicine Sales Co., Ltd. was eventually rejected by the Trademark Review and Adjudication Board (TRAB) after refusal review procedures. In the decision No. [2018] 0000003309, the TRAB held that the applied mark is a Chinese 4-character idiom that figuratively describes one’s act of sowing wild oats, and therefore could not be decently used as a trademark. It may impose negative effects on the traditional Chinese culture as well as public order and good customs, and it may also undermine socialist ethics, as banned by Article 10.1.8 of the Trademark Law.

No.2

Also rejected by the TRAB, the application No. 21966552 (吃我豆腐 [CHI WO DOU FU]) was found in the decision No. [2018] 0000097934 that, when used as a trademark, it would damage socialist ethics and generate ill effects. The phrase with both literal and figurative meanings could be simply interpreted as “eating my tofu” or a seductive invitation – “come touch me”. Although the trademark applicant submitted relevant evidence trying to establish the mark’s reference to mainly the designated products’ raw and safe nature, the TRAB found that the original meaning still would not prevail over the developed negative connotation in the public’s cognition as far as the exhibits are shown. Therefore, the mark was dismissed pursuant to the same Article 10.1.8.

No. 3

Applied by Jiangsu Yuexin Elderly Care Industry Co., Ltd., the application No. 19691932 (蛋蛋的幸福[DAN DAN DE XING FU]) also had no luck with the TRAB for its non-standard use of the last Chinese character “福” (FU). According to the decision No. [2017] 0000152184, by wrongly presenting the character, the mark was likely to cause negative social effects and thus constituted a violation of Article 10.1.8. Hence, the mark could neither be used nor registered as a trademark, despite the applicant’s submission of evidence trying to prove otherwise.

Negative Effects

In all of the three cases above, the applied marks were rejected for the “negative effects” they entailed during the substantive examination by the Trademark Office (CTMO) pursuant to Article 10.1.8 of the Trademark Law, whose decisions were again affirmed by the TRAB in later procedures.

According to the provision, “The following signs shall not be used as trademarks: (8) those detrimental to socialist morality or customs, or having other unhealthy influences.” In practice, “unhealthy influences” is an encompassing umbrella. The following examples may throw some light on what it really means.

(1) Politically negative effects

In accordance with the Standards for Trademark Examination and Trial, names and signs identical with or similar to the national and military names, flags, emblems, anthems, medals, etc., the names, signs, places of central state organs, or the names, signs of signature buildings, are deemed to have politically ill effects. For example, a trademark generally should not incorporate the character “国” (GUO, meaning“state”, “nation” etc.) or “军” (JUN, meaning “military”). The application No. 11703982 (旗军 [QI JUN]) filed by Beijing Jingniu Guangfa Alcohol Co., Ltd. was deemed a violation, as it could be interpreted as “JUN QI” (military flag) in reverse. In light of the standard, the number of applications as such has gradually declined in recent years. In addition, names of national strategies or construction projects should not enter into registration either. An example is the rejected TM No. 19348277 (益带益路, YI DAI YI LU) for its similarity to the Chinese characters of “One Belt One Road” (一带一路).

(2) Detrimental to religious beliefs, sentiments or folk beliefs

Trademarks featuring the characters “寺” (SI), “庙” (MIAO), “祠” (CI), synonyms of“temple”, have witnessed refusals time and again for violating Article 10.1.8,such as No. 21357905 (鹿门寺 [LU MEN SI]), No. 20708130 (泰山碧霞祠 [TAI SHAN BI XIA CI]) etc. Those touching upon religious denominations and invoking religious sentiments by using words or signs explicitly or implicitly referential to Buddhism, Taoism, Islam, etc. may also be rejected for negative effects – just as No. 23201274 (禅蕴 [CHAN YUN], “Zen”) was.

(3) With “non-standard idioms” and “non-standard characters”

A number of applicants substitute or alter the characters in idioms with their phonetic counterparts to make a trademark hoping to impress: No. 19988891 (味所欲为 [WEI SUO YUWEI], originated from the idiom “为所欲为” [WEI SUO YU WEI]), No. 9320998 (津津友味 [JIN JIN YOU WEI], from “津津有味” [JIN JIN YOU WEI]) etc. It is imaginable that if the trademarks are broadly used, they may confuse the public especially elementary learners as to the correct presentation of the idioms in issue, thus causing reverse influences. The third case concerning 蛋蛋的幸福[DAN DAN DE XING FU] illustrated above went farther as it also substantially changed the calligraphic display. Such distortions disrupt the public’s recognition of Chinese language use. In the long term, they may hinder the communication, inheritance, and development of the culture.

(4) Indecent buzzwords

Along with the development and popularization of the Internet, the language we use has also undergone rapid change, making buzzwords an essential part of life online and offline for many, more so for the youth. Before adopting such buzzwords as a trademark, applicants should delve into whether there may be negative meanings by nature and nurture. As our language is constantly evolving, a trademark previously registered may take on problematic connotations later, and risks invalidation for this reason. For example, the trademark No. 8954893 (MLGB) registered in 2011 began to be recognized as a handy dirty phrase in the following years. Upon the request for invalidation filed by a third party, two trials were held to examine the registration. Eventually, it was invalidated for its vulgar meaning and negative effects.

Conclusion

Indeed, the CTMO and the TRAB uphold relatively rigorous standards when it comes to whether an application has “unhealthy influences” as they strive to shut problematic trademarks from the market. This is beneficial in general. After all, when a trademark comes to be known by the public, consumers from all walks across all demographics may be concerned. The use of indecent trademarks with negative effects may eventually impact society by giving a signal that such use is tolerable. The public may thus be misled to use such questionable words on a broader scale. The above rejections may serve as a reminder that while applicants try to make a statement by endorsing a distinct and eye-catching trademark, they might as well keep their applications in check so as not to go too far beyond the limits of public order, good customs, and social ethics. This is something that should be attended to besides avoiding similar applications.

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