Each time, when we talk about trademark protection in China, we suggest: “File your trademark application ASAP!”
With that being said, there are some preliminary things you need to do before you eventually file your trademark. A thorough research has to be undertaken to understand what kind of text/graphic can be registered as a trademark in line with the Trademark Law of the PRC, already before you have the logo designed or consider a logo officially and initiate your marketing campaign. The following tips might be valuable:
I. The text must not be forbidden by law.
1. It must not be identical or similar to the name, flag, sign, emblem, military flag or the like of any country or international organizations, such as the “Red Cross” or “Red Crescent”.
The below-mentioned country name includes the full name, references and abbreviations and acronyms. For example, the official name of China is the People’s Republic of China. And the abbreviation or acronym is “CHN”, “P.R.C.”, “China”, “PR OF China” or “P.R. CHINA”.
However, there are still some exceptions allowed if the text is approved by the government of the country concerned. For the purpose of applying this exception, an applicant shall submit a written proof of the consent of the government of the country concerned. Where the applicant has registered such a trademark in the foreign country concerned for identical or similar goods or services, it shall be deemed as the consent of the government of the foreign country concerned.
2. It must not be identical or similar to official signs or hallmarks indicating control or warranty, meaning the signs or hallmarks used by official authorities to indicate their control, warranty or inspection over the quality, performance, ingredients or raw materials of the goods, such as CE certification, or FDA certification etc.
3. It must not contain discriminatory or offensive content.
4. It must not consist of exaggerated and fraudulent advertising, which is deceptive and likely to mislead the public with regards to the quality, trait, main raw material, ingredients or other features or places of origin of relevant goods etc. Such as use “24k” or “100% purity” to refer to any gold jewelry, to use “organic” to refer to any agricultural products, or use “Good Pork” to refer to vegetarian diet etc.
5. It must not mislead the public with regards to the place of origin or source of relevant goods or services. If the marks are composed of well-known foreign geographical name(s) or contain geographical name(s), while the applicant of which is not from such place, such applications will be rejected by the trademark office.
II. The text has to be distinctive
Distinctive features of a trademark refer to those features which a trademark shall have and are sufficient to enable the public to distinguish the source of goods, after all, this is the main purpose of any trademark – distinguish instead of confusing the public.
When judging whether a trademark has distinctive features or not, the following elements shall be considered: meaning, appellation and appearance or composition of the mark constituting the trademark, the designated goods of the trademark, the recognition habits of the public with regards to the designated goods of the trademark, the actual use in the industry of the designated goods of the trademark, etc.
Here are some examples were trademarks may not be distinctive enough:
1. Marks only having generic names of designated goods. Thus, we can use “apple” to refer to any manufactured product, however, we can’t use “apple” to refer to any kind of as fruit.
2. Marks only having direct representation of the quality of designated goods, such as using “yummy” or “delicious” to refer to any food.
3. Marks only having direct representation of technical features of goods, for example, use “Bluetooth” to refer to a telephone or laptop.
4. Marks only having direct representation of the function or use of designated goods
such as displaying the text “purified gas” to a designed product “Gas Purification Device”
5. Marks only having direct representation of the main raw materials of designated goods, such as the use of “colorful cotton” to refer to clothing.
6. Those that otherwise lack distinctive features, such as simple lines, general geometric figures, over-complicated words, patterns, numbers, letters or combination thereof, for example, a marketing post (combination of words, drawings).
7. One or two letters in general expressions, Arabic numerals in common form or ordinary packing or containers. However, if these letters, Arabic numerals, packing or containers are combined with other elements and leave a unique impression with the public then a trademark may be granted.
III. The mark must not be identical or similar to previous trademarks of others.
Identity of trademarks means that both trademarks are basically and visually the same and will likely confuse the public with regard to the source of goods or services when being used on the same or similar goods or services.
Similarity of trademarks means that trademarks are similar in font, pronunciation or meaning, or the overall arrangement and combination method or appearance of the combination of words and graphics in case of word trademark, or similar in shape or appearance in case of three-dimensional trademarks, or similar in color or color combination in case of color trademark, or similar in auditory perception or overall music image in case of a sound trademark, and will confuse the public with regards to the source of goods or services when being used on the same or similar goods or services. Identical goods or services include goods or services of the same name and of different names but referring to the same goods or services.
In conclusion, a trademark application is not just a simple task of merely submitting the application. Expertise and experience should be the key factor in choosing a professional service provider to help our readers with their trademark applications.
Useful link:
Trademark Office of National Intellectual Property Administration, PRC
