Monday, May 17 2021 .

How to Avoid Lack of Distinctiveness of Trademarks?

According to statistics, there was a record of 34,809 Chinese trademark applications in a day, while the trademark application refusal rate was more than 50% last year. After analyzing the trademark refusals, it is found that the main reasons for the refusal are similarity and distinctiveness problems. For the problem of trademark similarity, the applicant can reduce the risk through a trademark search before filing. But for the problem of lacking distinctiveness, the applicant shall consider before name his brand. This article talks about how to avoid the problem of lacking distinctiveness of trademarks.

The distinctiveness of the trademark refers to the features of the trademark, that is, public can identify and distinguish the goods/services provider from others. So, what kind of trademark lacks of distinctiveness?


According to Article 11 of Trademark Law, "The following signs shall not be registered as trademarks, i.e.
(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. Where trademarks under the preceding paragraph have acquired distinctiveness through use and become easily distinguishable, they may be registered as trademarks."

I. For the sign only bearing the generic name, design, or model of the goods.

For example, "502" is the generic model of the goods on adhesives if it was designated on adhesives; "Grapes" is deemed to be a generic name of fruits, so CNIPA will refuse the application if someone applies for a trademark "grape" on the goods of fruits. You may ask if the grape is not acceptable for a trademark, how can Apple be registered as a trademark on the mobile phone? The answer is that the trademark "Apple" does not have the function of identifying the origin of the goods when it is used on fruits, and consumers will only think it is a fruit that lacks distinctiveness as a trademark. But registering the trademark "Apple" on the smartphone will not confuse consumers with the product. The consumer knows the difference between an apple and a mobile phone. Hence, the public can identify the origin of the smartphone from the brand "Apple", not the fruit "Apple", so it has significance.

If we follow the logic above of a trademark, does it mean all the generic names are possible to register on other products/services which differ from their original meaning? The answer is no. For example, the trademark "pork" used on the product of pock lacks distinctiveness because of the generic name. However, if you apply for it on frozen aquatic animal products, CNIPA will also refuse the application because it will lead to a mistake to the consumer that the products are made from or contain pork. This kind of trademark has fraudulence, which will easily mislead the public as to the features and raw material of the products, which breaks Article 10 (7) of Trademark Law.

II. A sign only directly indicating the quality, main raw materials, functions, uses, weight, quantity, or other features of goods

For example, the trademark "pure" registered on mineral water may directly indicate the composition of the water, so this trademark lacks distinctiveness.

But there is an exception of "Tian Qi", Tian Qi is a kind of Chinese herbal medicine that is not acceptable for a trademark on medicine. But how about it is used on toothpaste? Absolutely, it also lacks significance which should not be registered as a trademark according to the Trademark Law Article 10.

However, there is a trademark "Tian Qi" on the toothpaste in China. The trademark got significance through the long-term use before its registration, which can make the consumer distinguish the products from others.

III. For other signs which are devoid of distinctive character

1. Very simple lines and common geometric figures;
2.  Very complex words, graphics, numbers, letters or a combination of the above elements;
3. One or two letters without any special design;
4. Arabic numerals without any special design;
5. The frequently-used packaging, containers or decorative patterns of goods;
6. Single color;
7. Phrases or sentences that express the characteristics of goods or services.

This clause is mainly aimed at signs that are too simple or too complex to identify which the consumers may think they're decoration and description of the products. However, from the cases of "Tian Qi" that the signs of lack of distinctiveness can be registered as a trademark through long-term commercial use. For example, the below trademark was filed by Christian Louboutin.

(the graphic trademark)
The trademark is the red color of the shoe sole, which is the character of the product. The trademark was registered through the Madrid system in China. The trademark shall not be accepted according to law, but considering the use and fame of this trademark worldwide, it was approved.

In summary, the applicant needs to pay attention to avoid the situation of lacking distinctiveness when naming a brand. It is advised to consult a trademark attorney before registering the trademark. Though the use of a trademark that is lacking distinctiveness may help to register the trademark finally, the risk is too high. You cannot stop others from using your trademark, which may lead to a monetary loss but also destroy your brand reputation. Borsam IP


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