China: Trademark comparing: disclaimed part no longer valid even with distinctiveness

Last Updated: 21 July 2015
Article by Yang Hua, Ding Xianjie and He Tongjun

What should we concern: when determining the level of similarity between trademarks, it should be limited to comparing the part that the citation mark has acquired the right to exclusive use with the mark in application. The part that is disclaimed of the exclusive right to use in an early registration even if it has distinctiveness should not constitute a valid part for comparison and impede registration of a later filed trademark.

"Disclaiming the right to exclusive use" in trademark application refers to the situation in which the proprietor makes a disclaimer to give up any right to exclusive use for a part of the trademark, in order to avoid rejection of the whole application due to registrability issue of the disclaimed part. Signs prohibited from registration due to a lack of distinctiveness are the part that is more commonly disclaimed of the right to exclusive use. In practice, some proprietors also disclaim the right to exclusive use for a part that has distinctiveness (the Disclaimed Part), which gives rise to the issue referred above, whether the Disclaimed Part will function to impede the registration by others of a later filed application.

The Chinese Trademark Review and Adjudication Board (TRAB) usually holds that although the proprietor of the early trademark disclaims the right to exclusive use for the Disclaimed Part, the disclaimer will not increase the probability to distinguish the citation mark from the mark in application. Therefore, the principle of comparison between overall appearances should still apply to decide whether they constitute similar trademarks. In other words, the Disclaimed Part still functions as an element in the citation mark, and together with the non-disclaimed part, the citation mark is compared as a whole with the later filed trademark.

The court expresses different thoughts in some cases. For example, in the judgment of the appeal for "MAGISTRALE" V.S. the cited early registration for " 01" ("MAGISTRAL NUTRITION" is disclaimed of the right to exclusive use), Xing Zhong Zi (2011) no.1348, Beijing High Court holds that they are different in terms of overall appearances, even if used in relation to the identical or similar goods e.g. cosmetics and others, they are unlikely to cause confusions among the public. Therefore, they do not constitute similar trademarks. More importantly, the court further points out that "MAGISTRAL NUTRITION" in the citation mark is disclaimed of the right to exclusive use, and should not limit fair use by others.

Supposing that the aforesaid judgment is still made on the basis of making a comparison between the overall appearances, in a recent judgment made by Beijing First Intermediate People's Court, Xing (Zhi) Chu Zi (2014) no. 6144, when deciding whether the early registration for " 01" ("WELLS FARGO" is disclaimed of the right to exclusive use) should impede the registration of WELLS FARGO COMPANY's application for "WELLS FARGO", the court makes a breakthrough to its previous principle of comparison in overall appearances, and makes clear that "When making comparison between a trademark in application with a citation mark, it should be limited to comparing the part that the citation mark acquires the right to exclusive use e.g. the device part with the mark in application. The part that is disclaimed of any exclusive right to use in the citation mark should not be taken into account as a part of the citation mark to impede fair use and registration of the mark in application."

In this case, the mark in application is comprised of "WELLS FARGO" in plain text, the citation mark is comprised of "WELLS FARGO" and device, but "WELLS FARGO" is disclaimed of the right to exclusive use. KWM acts for WELLS FARGO & COMPANY (NYSE: WFC) and insists in the appeal that according to Article 4 of PRC Trademark Law, trademark registration is granted to applicants "needing to acquire the right to exclusively use a trademark". For the part in a trademark that its propitiator does not wish to acquire the right to exclusive use, the administrative authority has no reason to entitle the propitiator to the right to exclusive use and impede an application by others who need to acquire the right to exclusive use; Moreover, now that "WELLS FARGO" in the citation mark is disclaimed, it should not limit fair use by others of the Disclaimed Part, and it is incorrect to conclude the mark in application as similar to the citation mark, by comparing the Disclaimed Part with the mark in application.

Beijing First Intermediate People's Court accepts the view of the plaintiff and holds in the judgment that "the basis for an early registration to function to impede the registration of a later filed application, is that the early registration acquires the right to exclusive use earlier than the later filed application. The starting point and basis for determining the level of similarity is that the early registration has acquired the right to exclusive use, any other principles for determining the level of similarity will apply only when this pre-condition is met." The court's attitude is clear on the issue referred above and this will have great influence on similar cases.

Therefore, the TRAB announced the refusal ground of Trademark Review and Adjudication Board is not tenable.

King & Wood Mallesons was the trademark attorney representing Wells Fargo Company in this case.


For trademarks that are partially disclaimed of the right to exclusive use, when applying the principle of comparison of overall appearances, there remains the question as to determining the parameters of protection for the disclaimed part. If the standard is too strict, it will give material protection to the disclaimed part which contradicts to the principle set up by Article 4 of the Trademark Law; if the standard is too loose, the disclaimed part will be excluded from the comparison of the overall appearances, resulting in failure to protect its spatial relationship, design element and other contents that may function to distinguish different trademarks and should be admitted to the scope of exclusive use.

The significance of the court judgment lies in that it provides an important precedent case setting the parameters of protection for the disclaimed part when applying the principle of comparison of overall appearances, namely, the disclaimed part should not limit fair use and registration of the same by others, the contents of a disclaimed part should not be taken into account in the comparison of similarity of a later filed mark. Additionally, we think what should actually be included in the comparison of overall appearance of a disclaimed part is its design element, its spatial relationship, configuration, space and method of combination with other elements. The case is currently pending in an appeal.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.