On January, 2023, the CNIPA issued “Guidance on Application, Registration and Use of Trademarks Containing Geographic Names” and “Guidance on Prohibition of Marks from Being used as Trademarks”, which extracted the main contents of the Guidelines for Trademark Examination and Trial, sorted them out based on topics and made specific explanations in combination with examples. Compared with the Guidelines, these two documents are easier to understand and to consult for trademark applicants. Furthermore, the two documents help trademark applicants to better understand the risks and legal consequences of violating Article 10 of the Trademark Law, guide market entities to establish correct awareness of trademark application, registration and use, advocate socialistic core values, maintain public order and social ethics, and promote high-quality development of intellectual property cause.

 

To facilitate the understanding of the two documents, we list the main contents thereof below:

Item 2, 7, 8 of Paragraph 1 and Paragraph 2 of Article 10 of the Trademark Law specifically stipulate that some signs containing geographical names are prohibited from being used as trademarks, and if these provisions are violated, the relevant trademark applications will be refused, and the relevant registered trademarks are likely to be declared invalid according to law.

The “Guidance on Application, Registration and Use of Trademarks Containing Geographic Names” elaborates the relevant provisions on the prohibited signs.

  1. State names: trademarks containing the State name of a country or containing signs identical with or similar to the State name of a country shall not be registered or used.

[Exceptions: where consent has been given by the government of the country, or the relevant sign explicitly has another meaning and will not mislead the public, or the State name part is independent from other significant part of the sign and is only for faithfully indicating the country which the applicant belongs to.]

  1. Geographical names of administrative divisions at or above the county level: the following signs shall be not be registered or used as trademarks:

1) signs consisting of the geographical name of an administrative division at or above the county level;

2) signs containing the geographical name of an administrative division at or above the county level;

3) signs in which the word or phrase part is not completely identical with the geographical name of an administrative division at or above the county level, but its character pattern or pronunciation is similar enough to cause the public to mistake it as the geographical name, thereby being liable to mislead the public about the place of origin;

4) signs consisting of abbreviations of geographical names of two or more administrative divisions, being liable to mislead the public about characteristics such as the place of origin;

5) signs containing a geographical name which, although having another meaning, clearly indicates the name of a place when used in combination with words such as “city”, “county”, and “district”.

To look up the geographical names of China's administrative divisions at or above the county level, you may log in the official website of the Ministry of Civil Affairs: http://xzqh.mca.gov.cn/map

  1. Foreign geographical names well-known to the public: the following signs shall be not be registered or used as trademarks:

1) signs consisting of a foreign geographical name well-known to the public;

2) signs containing a foreign geographical name well-known to the public, being liable to mislead the public about the place of origin;

3) signs in which the word or phrase part is not completely identical with a foreign geographical name, but its character pattern or pronunciation is similar enough to cause the public to mistake it as the geographical name, thereby misleading the public about the place of origin;

  1. Geographical names of administrative divisions below (not including) the county level famous for producing certain goods or providing certain services, or foreign geographical names not well-known to the Chinese public: the above signs shall not be registered or used as trademarks if the relevant administrative divisions are famous for producing certain goods or providing certain services, and using the signs on designated goods or services is liable to mislead the public about the place of origin.
  2. Geographical names with political significance: Geographical names which have certain political significance, such as names of red revolutionary bases or places where major political events happened, shall not be registered or used as trademarks.
  3. Names of state-level new districts or state-level major development zones: Signs identical with or similar to the name or standard short name of a state-level new district or a state-level major development zone which is closely related to China's overall development strategy shall not be registered or used as trademarks.

[Exception: where the applicant can provide written evidence document proving that consent has been given by the State Council or its authorized department.]

  1. Names of places or venues for religious activities: Signs identical with or similar to the name of a place or venue for religious (Buddhist, Taoist, Islamic, Christian, Catholic, and other religious sects or branches) activities and folk belief activities shall not be registered or used as trademarks.
  2. Names of national major events containing geographical names: Signs identical with or similar to the names of a national major event or major project which is closely related to China's political, economic, cultural or social development shall not be registered or used as trademarks.

[Exception: where the applicant can provide written evidence document proving that consent has been given by the relevant department, and the registration or use as trademarks will not have any negative or adverse impact on the public interests and public order of Chinese society.]

  1. Names of mountains, rivers, scenic spots and buildings: Names of public resources such as mountains, rivers, scenic spots and buildings shall not be registered or used in large quantity as trademarks which are not for the purpose of use.

[Exception: 1) where the geographical name contained in the trademark and other elements which have distinct characteristics are independent from each other, and the geographical name is only for faithfully indicating where the applicant is located; or 2) the geographical name is part of a collective mark or a certification mark.]

This Guidance also points out that when using a registered trademark, the trademark owner shall use it in accordance with the approved sign and the approved goods or services, and shall not voluntarily alter, highlight, simplify, add, transform, or split, etc., the geographical name contained in the trademark. Trademark owners shall abide by the principle of honesty and good faith and the principle of prohibition of abuse of rights, and reasonably exercise and safeguard their rights. Bona fide use of a relevant geographical name only for indicating the origin of place, which is not a trademark use under the trademark law, shall be deemed as a fair use, and the trademark owner shall have no right to prohibit such use on the grounds that the geographical name is identical with that contained in its registered trademark. A trademark owner shall not assign its trademark which contains a geographical name to an assignee whose actual use of the trademark will mislead the public about the place of origin or the source.

 

The “Guidance on Prohibition of Marks from Being used as Trademarks” elaborates the prohibition of or limitation on the use of other signs than geographical names as trademarks.

Signs identical with or similar to the State name, national flag, national emblem, national anthem, military flag, army emblem, military anthem, or decorations, etc. of the People's Republic of China, and signs identical with the name or symbol of a central government department of the State, or with the name of the particular place, or with the name or image of the symbolic building, where a central government department of the State is located, shall not be registered or used as trademarks.

Common types include:

1) signs identical with or similar to the State name, national flag, national emblem, national anthem, military flag, army emblem, military anthem, or decorations, etc. of the People's Republic of China;

2) signs identical with the name or symbol of a central government department of the State, or with the name of the particular place, or with the name or image of the symbolic building, where a central government department of the State is located;

  1. Signs identical with or similar to the State name, national flag, national emblem or military flag, etc. of a foreign country shall not be registered or used as trademarks.

Common types include:

1) signs identical with or similar to the State name of a foreign country;

[Exception: where the applicant can provide written evidence document proving that consent has been given by the government of the foreign country, or where the applicant has obtained registration of the trademark on identical or similar goods in the foreign country.]

2) signs identical with or similar to the national flag, national emblem or military flag, etc. of a foreign country.

[Exception: where the applicant can provide written evidence document proving that consent has been given by the government of the foreign country, or where the applicant has obtained registration of the trademark on identical or similar goods in the foreign country.]

  1. Signs identical with or similar to the name, flag or emblem, etc. of an international intergovernmental organization shall be registered or used as trademarks.

[Exception: where the applicant can provide written evidence document proving that consent has been given by the international intergovernmental organization; or the sign has a clear different meaning or a specific pattern of representation and will not mislead the public.]

  1. Signs identical with or similar to an official sign or hallmark indicating control and warranty shall not be registered or used as trademarks.

[Exception: where the applicant can provide written evidence document proving that authorization has been given by the official authority; or the sign has a clear different meaning or a specific pattern of representation and will not mislead the public.]

  1. Signs identical with or similar to the name or symbol of the Red Cross, the Red Crescent or the Red Crystal shall not be registered or used as trademarks.

[Exception: where the sign has a clear different meaning or a specific pattern of representation and will not mislead the public.]

  1. Signs having the nature of discrimination against any nationality shall not be registered or used as trademarks.
  2. Signs having the nature of fraud, being liable to mislead the public about the characteristics of the goods such as the quality or the place of origin shall not be registered or used as trademarks.

Common types include:

1) signs liable to mislead the public about the quality, character, function, usage, raw material, content, weight, quantity, price, technique, technology and other characteristics of the goods or services;

2) signs liable to mislead the public about the place of origin or the source of the goods or services;

3) other signs liable to mislead the public, such as “央储”.

[Exception: where the public, based on their daily life experiences, will not be misled about the characteristics, such as quality, or the source of the goods or services designated by the signs.]

  1. Signs detrimental to socialist morality or customs, or having other unhealthy influences shall not be registered or used as trademarks. Signs having unhealthy influences include circumstances where the signs per se have unhealthy influences, where the signs per se do not have unhealthy influences but are liable to produce unhealthy influences when used on certain goods or services, and where the signs, when registered or used by certain applicants, are liable to produce unhealthy influences, etc.

Common types include:

1) words or symbols against social public order and good customs and socialistic core values, including uncivilized, vulgar or low-taste words or symbols that relate to terror, violence, obscenity, pornography, gambling, feudal superstition, or words or symbols that have negative impacts on the relevant public or a certain group of people or that carry demeaning undertones, or signs similar to the pattern or pronunciation of the aforementioned words or symbols;

2) Signs having politically unhealthy influences: including signs that undermine national sovereignty, dignity, image, or endanger national security or damage national unification; signs identical with or similar to the name of a leader of China or the CPC or a leader of any other country, region, or political international organization known to the public; signs identical with or similar to the important theoretical achievements, scientific judgments, political discourses, etc. of the CPC, or identical with or similar to national strategies, policies, important meetings of the CPC and China, etc.; signs containing the name of an event, a place or a number, etc. that has a political significance; and signs identical with or similar to the name or symbol of a terrorist organization, a cult organization, a gangland organization or an organization of a gangland nature, or the name or code name of a relevant leader thereof; other signs having politically unhealthy influences.

3) signs liable to have unhealthy influences on economy, culture, nation, religions and society: including signs identical with or similar to the name of symbol of the legal tender of a country; signs containing non-standard Chinese characters or non-standard usage of idioms; signs detrimental to the dignity or feelings of a nation or a race; signs detrimental to religious beliefs, religious feelings or folk beliefs; signs identical with or similar to the name or short name of a party and government department, an army, a police or military unit, a party, a government body, a social group, or other units or organizations, or identical with or similar to a relevant title, post, rank or emblem, etc.; signs identical with or similar to the name or standard short name of a state-level new district or a state-level major development zone which is closely related to China's overall development strategy, or identical with or similar to the names of a national major project or major science and technology program which is closely related to China's political, economic, cultural or social development; signs identical with or similar to a major natural disaster, major accident, public health event, social safety event, etc. or containing relevant particular words; signs containing the name or photo of a hero or martyr, or deeds, spirits or slogans relating thereto; signs identical with or similar to the name of a public figure relating to politics, economy, culture, nation and religion; other signs that are liable to have unhealthy influences on China's economy, culture, nation, religions and social public interest and public order.

This Guidance also specifies the legal consequences of registering and using absolutely prohibited signs as trademarks:

Trademark applications for the relevant signs set forth in this Guidance will be refused for violating the Article 10 (1) of the Trademark Law, and relevant registered trademarks may be declared invalid. Where relevant trademark applications are filed in bad faith, penalties such as a warning or a fine will be imposed on the applicants, and the penalty information will be included in the national enterprise credit information publicity system and be released to the public.

Where the relevant signs mentioned in this Guidance are used as trademarks without registration, the users will be ordered, according to law, to stop the use and rectify the situation within a specified time limit, and may also face penalties such as a notice of criticism or a fine.

Should you have any questions about the two documents, please do not hesitate to contact us and we would be glad to assist.

Please see the following links for the original texts of the two documents:

https://www.cnipa.gov.cn/art/2023/1/19/art_66_181565.html

https://www.cnipa.gov.cn/art/2023/1/19/art_66_181566.html

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