Chinese IP Law Updates
February 17, 2020

Slogan Trademark Should Be Distinctive

Case docket:

(2018) Jing 73 Hang Chu No.11359

Parties Concerned:

Plaintiff: Shenzhen HongLian Trading Co., LTD (hereinafter referred to as the “HongLian”)

Defendant: Trademark Review and adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the “TRAB”)

Case overview:

The trademark No. 23851045 “DON’T START WITHOUT ME” (hereinafter referred to as the “Disputed Trademark”) was filed for registration by HongLian designated on services “advertising, the publication of publicity texts, publicity, etc.” on April 28, 2017, while TRAB held that the Disputed Trademark shall be rejected as it lacked distinctiveness following Article 11.1.(3) of Trademark Law of the People’s Republic of China (hereinafter referred to as the “Trademark Law”).

Out of dissatisfaction, HongLian filed a lawsuit with the Beijing intellectual property Court and argued against the TRAB’s decision by the counter-claims that the Disputed Trademark could be used as a trademark for the following causes: (1) the Disputed Trademark consists of English words but wasn’t a descriptive term, which would not constitute the scenario of lacking distinctiveness; (2) the Disputed Trademark, by and large, could be distinguished the source of trademark by the relevant public; and (3) the Disputed Trademark was not only in line with the general form but also with the relevant public’s habitual understanding of the trademark. As such, HongLian requested the court to set aside the alleged decision as well as pleaded the Defendant to re-make the decision.

The alleged decision was clear in fact-finding, correct in application of law and lawful under legal procedures as claimed by the defendant. In this regard, the Defendant pleaded Beijing Intellectual Property Court to dismiss the requests by the Plaintiff according to the law.

As interpreted by the court, the pieces of evidence, provided by the Plaintiff, failed to bear out the Disputed Trademark was equipped with distinctive features to function greatly in distinguishing the source of trademark, which had constituted the scenario prescribed in the Article 11.1.3 of the trademark law, that a sign lacking distinctiveness may not be registered as trademarks.

Examination opinion:

Upon examination, the Disputed Trademark was a commonly used English term, to some extent may not be deemed as a trademark. In this instance of the registration on the application services, the Disputed Trademark lacking distinctiveness and differentiation of the source of the services largely corresponded with Article 11.1.3 of the Trademark Law that “a sign lacking distinctiveness may not be registered as a trademark”. Despite the Plaintiff’s submission of evidence trying to prove otherwise, it failed. Hence, the court dismissed the claims of the plaintiff and maintained the decision made by TRAB.

HFL comment:

Distinguishingand identification is indispensable features that a trademark should have. Only when a trademark to be registered is distinctive, does it play a role in corresponding the source of goods or services with the relevant providers’ or trademark applicants. Pursuant to Trademark Law, the trademark to be registered shall be distinctive for easy identification. As Articles 10, 11, 12 of the Trademark Law stated, some signs may not be registered as a trademark, among which Article 11 stipulated that:

(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;

(3) Other signs lacking distinctiveness.

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. On the other hand, some signs like word, design or letter can be served as a trademark. While the mark is commonly used on particular goods or services in the specific industries, it would not be recognized as a trademark for lacking distinctiveness.

Regarding this case, the Disputed Trademark, while comprised of four English words, was more likely to be an English common phrase or slogan-type short sentence shown among the public. Given the common phrase or short sentence in overall form, the Disputed Trademark may not be regarded as an original creation by the plaintiff, making it difficult to be identified as a trademark among the public and lowering the identification function. As such, the distinctiveness of the disputed Trademark weakened.

In the practice of examination, applying for a trademark in phrases, short sentences, or slogans form is familiar to the examiners, but not many of them could access to register. “Trademark Examination and Trial”, the trademark examination standards, published by the Trademark Office in December 2016, enumerated that the mark with phrases, sentences or advertising terms expressing the characteristics of a good or service were one of the phenomena lacking distinctive features, which was an example of the non-identification TM. The prevailing views were that phrases or slogans used as trademark applications by and large mirrored either some relevant descriptions of the designated goods or services or expressing the pursuit of the business philosophy.

In other words, trademark in phrases, slogans or short sentences congenitally lacks distinctiveness that a trademark should have, as consumers would not deem phrases or slogans as a trademark to distinguish the different goods producers or services providers. Thus far, applications for trademark registration in phrases or slogans forms had often been rejected upon the first examination by the Trademark Office, while some approval registration of a trademark in phrases or slogans occurred through use by the trademark applicant.

Herewent an example. As being easily deemed as a publicity expression, the application of the trademark “StreetDance of China” (“这!就是街舞” in Chinese) was rejected by the Trademark Office upon the first examination, which was designated on services like “Tuition; Organization of competitions [education or entertainment], etc.” in class 41.

Upon trial, TRAB upheld that the program branded “Street Dance of China” had acquired a certain status in the relevant domain after continuous and extensive use and advertising, thus making it recognizable as a trademark with clearer identification and distinctiveness. After that, the trademark“Street Dance of China” had approved for the preliminary examination announcement.

With regard to this case, the TRAB shall examine the trademarks by judging either the inherent distinctiveness or obtained distinctiveness, implying that the trademark to be applied for whether obtaining distinctiveness through actual use if lacking inherent distinctiveness.

In summary, it is hard for trademark registration in short sentences or slogan forms to succeed in the examination, as phrases or slogans are often deemed as lacking distinctiveness by the Trademark Office. As a result, applying for short sentences as a trademark is worth pondering over for enterprises when out of substantial evidence as support.