Many international companies include their place of origin in their trademarks, as a way to indicate the source and quality of the product. Though adding geographical names to trademarks may increase product sales, in China, this characteristic is restricted by the Trademark Law.
Article 10.2 of Trademark Law states that the geographical names as the administrative divisions at or above the county level and the foreign geographical names well known to the public shall not be used as trademarks, but such geographical terms as have otherwise meanings or are a part of collective marks/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. An example of this could be the brand L'Oréal Paris.
Legal provisions
Geographical names of administrative divisions at or above the county level in China, as well as foreign geographical names known to the public, are not allowed to be used as trademarks.
According to the "Guidelines on Application, Registration and Use of Trademarks Containing Geographical Names", published by the China National Intellectual Property Administration (CNIPA), the following instances when geographical name-containing marks cannot be registered or used:
Marks containing words identical with or similar to the state name of a foreign country, with the following exceptions: where consent has been given by the government of the country; where the mark bears different meanings and would not mislead the public as a geographical name; or where the state name is independent from the rest composing elements of the mark and just functions to indicate the country of origin.
Marks containing words identical with or similar to geographical names of administrative divisions at or above the county level, specifically: marks composed of geographical names of administrative divisions at or above the county level; marks containing geographical names of administrative divisions at or above the county level; marks containing words similar to geographical names of administrative divisions at or above the county level; marks composed of abbreviations of two or more geographical names of administrative divisions at or above the county level.
Marks composed of words with meanings aside from geographical names, where the words are used in combination with words such as “city” or “county”, which highlight the meaning of geographical name.
Marks containing words identical with or similar to foreign geographical names well-known to the Chinese public, specifically: marks composed of foreign geographical names well-known to the Chinese public; marks containing foreign geographical names well-known to the Chinese public; or marks containing words similar to foreign geographical names well-known to the Chinese public.
Marks containing geographical names of administrative divisions under the county level or foreign geographical names not widely known to the Chinese public, where such places are famous for producing certain goods or for provision of certain services.
Marks containing geographical names with political connotations.
Marks containing names of state-level new areas or state-level development zones.
Marks containing names of key state projects, which contain geographical names.
Marks containing names of places or locations for religious activities.
Marks containing names of mountains, rivers, tourist attractions, public buildings and etc., which are considered as public resources, with the following exceptions: the name of place is independent from the rest distinctive composing elements and the name of place just indicates the location of the applicant; or the name of place is one of the composing elements of collective mark or certification mark.
The foreign geographical names known to the public include:
The mark only consists of foreign geographical names known to the public.
The mark contains a foreign geographical name that is known to the public and is prone to misidentification of the geographical of origin.
The text composition is not exactly the same as the foreign geographical names known to the public, but the shape and pronunciation are similar enough to make the public misunderstand the geographical name, resulting in signs of misunderstanding of the geographical of origin.
Exceptions to trademark registration of geographical names
Where a brand complies with one of the following circumstances, it may be registered as a trademark:
The geographical name is not well-known by the relevant public.
Sometimes, whether a foreign geographical name can be used in a trademark depends on its fame in China. According to the provision, all levels of administrative divisions of names of foreign places fall under the regulation.
The determination of fame does not simply depend on the level, even the name of a small county or street, as long as it’s familiar to the public in China, it will probably be prohibited to use in a trademark. Otherwise, if the geographical name is not well-known to the relevant public, which means the customers will not always associate the relevant goods or services to the certain foreign places when recognizing the sign, then the above situation of confusion may not appear during the actual use of the trademark, and it may be allowed to be used as a trademark.
Also, while a foreign geographical name being used in the domestic environment, the expression as well as the writing may have changed due to pronunciation or transliteration, which may result in the discrepancy of fame between the real foreign place and its foreign name from the Chinese customers’ aspect.
The trademark includes other elements that differ its whole meaning from a geographical name
Even if the geographical name is well-known to the public to some extent, it could be included in a trademark under certain circumstances. If a sign indicates a whole different meaning from the geographical name, or it merely signifies the real location of the applicant, the trademark may possibly be allowed.
According to the Standard of Trademark Examination, trademarks that contain foreign geographical names and other words but have other meanings as a whole and will not cause the public to misidentify the origin of the goods, can be registered as a trademark.
Collective marks or certification marks are not prohibited to contain a geographical name, because they are often with the function of providing certification or indication that the designated products or services meet a certain regional standard or carrying geographical features.
The trademark has obtained distinctiveness by long-term commercial use, which would not confuse the relevant public
The key point is that the sign shall have a meaning that is different from the geographical name and is distinguishable in the relevant market. If a trademark has been used on designated goods or services for a certain period and acquired its distinct meaning among the public and customers are able to identify it as a provider of goods or services instead of foreign places.
The second meaning of the trademark should be significant and stable, which suffices the trademark function of identification. The determination of the second meaning of a trademark always requires a large amount of use evidence and supportive documents on its fame.
Disclaimer on the exclusive right of the geographical name
The exclusive right of a registered trademark may be different from a common trademark. As public resources, a geographical name cannot be the subject of a private right. At the request of the trademark office, the applicant should disclaim the exclusive right of the part of the geographical name in the trademark. In practice, CNIPA will issue an Office Action to demand a disclaimer. The geographical name will not be deleted after disclaiming but will influence the exercise of exclusive rights that the trademark owner does not have the right to stop others from using the geographical name.
If the mark has been already registered, it will continue to be valid. But according to the CNIPA's guidelines, registered trademarks may also face the risk of invalidation actions.
The Standard of Trademark Examination states that if a trademark containing a foreign country/city name has been registered in the corresponding country, it is deemed that the foreign government agrees to allow the trademark registration.
Therefore, a company may overcome the refusal by submitting the trademark certificate of the foreign trademark in the review stage. To prove the authenticity of the trademark certificate and improve the success rate, it is suggested having the trademark certificate be notarized and legalized before submitting it to CNIPA.
Conclusion
Due to different historical backgrounds, changes in administrative zoning and changes in the applicant's use and business conditions, whether it can successfully maintain the registration in the possible invalidation procedure depends on each different case.
China is a large country, with many well-known geographical names from all over the world. Though a trademark may seem distinctive or creative, it may also enter the designation of "marks containing geographical names".
To avoid a possible rejection, foreign companies should consult with a professional agency before applying for a trademark registration.
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