The China National Intellectual Property Administration (CNIPA) issued Guidance on Registration and Use of Trademarks Containing Geographical Names on January 19, 2023 . Shufang Zhang and Ling Zhao explain more.

Aims of the Guidance

The Guidance aims to improve entities' understanding of the regulations on marks containing geographical names, the risks lying in the stability of rights for marks containing geographical names and the boundaries of rights

Marks containing geographical names are usually rejected from registration or prohibited from use as they violate Article 10.1.2 (containing names of foreign countries), Article 10.1.7 (deceptive description on the place of origin of goods/services), Article 10.1.8 (detrimental to socialist morals or customs), or Article 10.2 (containing geographical names of administrative divisions at or above the county level or famous foreign geographical names) of the China Trademark Law.

Prohibited from registration

The Guidance provides the situations where marks containing geographical names are prohibited from registration and use as follows:

  • 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[1]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

Further details

The Guidance further specifies proper use, reasonable enforcement of rights and fair use of trademarks containing geographical names.

The proper use of trademarks containing geographical names requires:

  • using the mark on its designated goods and services
  • no altering, highlighting, abridging, adding elements to, deforming or splitting the geographical name contained in the mark
  • if the trademark is used on goods/services aside from its designated goods/services, or there is a change on the mark sample, new applications shall be filed.

The reasonable enforcement of rights over trademarks containing geographical names means the registrant shall follow the principle of good faith, and should not abuse their rights when they enforce their rights and protect their interests.

The fair use of trademarks containing geographical names requires the entities to use them in good faith, to pay full respect to trademark rights, and to use them within proper boundaries in the use of geographical names, to avoid misleading consumers regarding the origin or source of the goods.

The Guidance stipulates that the transfer of a trademark containing a geographical name is not allowed if such transfer would cause confusion among consumers regarding the origin or source of goods/services. In addition, for the transfer of collective or certification marks, assignees are required to meet the requirements on qualifications of holders of collective or certification marks.

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.