Imagine your brand is thriving domestically, fueling your ambition to enter global markets. With a strong brand consciousness, you have registered your trademark early in your home country and are planning your international trademark strategy before launching into global markets. As one of the world’s largest markets, China is often a key part in these trademark strategies. Generally, the trademark registration proceeds relatively smoothly in most countries, but in China, it often faces numerous challenges, and refusal is a common hurdle.
Trademark refusals can be categorized into relative grounds and absolute grounds. In simple terms, relative grounds refer to “conflicts between the applied trademark and existing trademarks”， while absolute grounds refer to “inherent defects in the applied trademark”. You might worry about potential conflicts with other trademarks but might not question the inherent defects of your own trademark.
Recent statistics show a dramatic increase in the number of trademark refusal reviews due to “absolute grounds,” with an annual growth rate of 35%. This trend indicates that the examination on “absolute grounds” is tightening. The most representative issue is the “lack of distinctiveness” of the applied trademark. However, what exactly is the trademark’s distinctiveness?
Before answering this question, let’s look at two examples with basic common sense:
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l If the word “chocolate” appears on the packaging of a cake, you would interpret it as indicating a “chocolate flavored cake” rather than as a trademark, right? Yes, because “chocolate” is unlikely to serve as a distinctive trademark on a cake.
l If the letter “XL” appears on a T-shirt, you would understand it as indicating “extra-large size” rather than as a trademark, right? Yes, because “XL” is unlikely to function as a distinctive trademark on clothing. |
At this point, you might get a bit of sense.
From a different perspective, if “chocolate” were registered as a trademark for cakes by someone else, and you opened a bakery, you would need to be very cautious about using the word “chocolate.” Otherwise, you might inadvertently infringe on someone else’s “chocolate” trademark. Fortunately, the law helps us avoid such situations.
“Distinctiveness” focuses on whether a mark has the ability to distinguish the source of goods and serves as a trademark identifier. Raw materials and generic models are difficult to serve as identifiers, so marks lacking distinctiveness cannot be registered as trademarks and cannot be monopolized by anyone; otherwise, it would lead to market confusion.
China’s trademark law specifies many situations that lack distinctiveness, such as marks that are merely generic names or models of goods, directly indicate the quality, function, or use of goods, or even common everyday language.
“Distinctiveness” is usually divided into “inherent distinctiveness” and “acquired distinctiveness.” A mark can be registered if it meets the requirements of either.
Inherent distinctiveness refers to the mark’s ability to function as a trademark on its own, focusing on the degree of association between the mark and the corresponding goods or services. Specifically, the more closely a mark is linked to the goods, the less inherent distinctiveness it has. Conversely, if there’s a weak or no association with the goods, the mark has a stronger inherent distinctiveness.
So, can trademarks with weak inherent distinctiveness be registered? In other words, can trademarks with defects still achieve registrability through subsequent efforts? Fortunately, the law provides such an opportunity. Trademarks with weak inherent distinctiveness can be registered if through continuous use, consumers come to associate the mark with the user and no longer view it merely as a decorative or descriptive term. This process of acquiring distinctiveness through use allows the mark to be registered.
In practice, the inherent distinctiveness of a mark is often a matter of degree rather than a simple binary of “yes or no”, which leads to a subjective and indefinable situation. Inherent distinctiveness and acquired distinctiveness are interrelated in a complementary manner. If a mark has strong inherent distinctiveness, it does not need to acquire distinctiveness through use and can be registered directly. Conversely, if a mark’s inherent distinctiveness is weak, it will require a higher level of acquired distinctiveness to be eligible for registration. In the commercial market, words directly related to the industry are often favored due to their promotional advantages, leading to better market outreach. However, such words are also more likely to face refusal during the trademark registration process.
It is important to note that during the trademark registration application stage, the Trademark Office primarily examines inherent distinctiveness. A refusal base on lack of distinctiveness usually refers to a lack of inherent distinctiveness, as applicants do not have the opportunity to prove acquired distinctiveness at this stage. Therefore, if a trademark is refused due to lack of inherent distinctiveness, it can be further evaluated for inherent and acquired distinctiveness, and then pursued through subsequent procedures, such as review and even litigation.
Here are some trademarks that have been refused in the past two years due to a lack of distinctiveness:
| Mark | Main Goods/services | Refusal Reason | Review/Litigation Result |
| 、 | Clothes, shoes, socks | Only directly describes the main materials, functions, uses and other characteristics of the goods | Inherent distinctiveness recognized,
Review successful |
| Vehicle roof boxes, camping trailers, vehicles, boats | Review failed | ||
| Medical care, Health consulting | Only directly describes the quality, functions, uses, and other characteristics of the services | Inherent distinctiveness recognized,
Review successful |
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| Seedology | Training, education, online courses | It can be split into “Seed ology”, only directly describes the content of the services | |
| WOWCAT | Clothes, shoes, socks | It can be split into “WOW CAT”, common term, lacking inherent distinctiveness | |
| OF HUNGER | Smartwatches, Smartphones | Common term, lacking inherent distinctiveness | Review failed, both inherent and acquired distinctiveness recognized in litigation, ultimately successful |
| Phone shells, headphones, computer screen protectors | Review failed | ||
| SECURSTYLE | Paints, Pigments | Easily perceived as promotional language for the goods, lacking inherent distinctiveness | Review failed |
The trademarks that were successful in review or litigation were considered to have inherent distinctiveness, and some were enhanced in distinctiveness through use, thus acquiring distinctiveness. Let’s look at an example where a trademark with weak inherent distinctiveness was registered primarily through acquired distinctiveness.
In April 2021, 3M COMPANY filed trademark applications for the mark “” on goods such as “filing tabs, stationery tabs etc.” in 40 countries. The mark was registered in most of these countries, but it was refused in China. The reason for refusal was that “Post-it” could be translated as “post-it note”, and when used on goods like “filing tabs” and “stationery tabs”, the relevant public would not easily recognize it as a trademark, thus lacking inherent distinctiveness. 3M COMPANY filed a review of the refusal, but the review decided that the trademark lacked both inherent and acquired distinctiveness. Even though the trademark was registered in over 30 other countries, this did not justify its registration in China. 3M COMPANY continued to pursue litigation. Ultimately, the court determined that the trademark had weak inherent distinctiveness, but after continuous use and generating a certain level of recognition, it had acquired distinctiveness and could be registered as a trademark.
Now, let’s see which of the following situations your trademark falls into and find the corresponding solution:
- Trademark is unrelated to the goods and has strong inherent distinctiveness: Congratulations! Trademarks in this category are unlikely to face refusal for lack of distinctiveness. Generally, coined words have strong inherent distinctiveness, such as “Kodak,” “Sony,” and “Lenovo.” However, note that some coined words may still be refused if they are considered suggestive or if the examiner’s imagination leads to a finding of lack of distinctiveness, such as “Seedology”.
- Trademark is somewhat related to the goods: Trademarks in this category are easily refused due to lack of distinctiveness and may require some use. You can attempt to provide evidence of use through review or litigation procedures. For example, “DoctorFace” used for medical services.
- Trademark has a high degree of relevance to the goods and weak inherent distinctiveness: Trademarks in this category are difficult to register and require substantial use and high recognition. You can try to pursue registration through subsequent procedures and be prepared for a prolonged process, such as “”.
- Trademark is a common term: Trademarks in this category are likely to be refused for lack of inherent distinctiveness. It is best to use and actively pursue registration through review or litigation by providing evidence of use. Examples include “WOWCAT”, “OF HUNGER”, and “TellMore”.
In summary, trademarks refused for lack of distinctiveness have a relatively low probability of successful registration upon review, due to the strong subjectivity involved and the difficulty in predicting outcomes. Therefore, to avoid “inherent defects”, if you can consider these factors in advance during the brand name selection phase, the subsequent trademark registration process will be more efficient and effective.
RULEASY IP TEAM
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Ruleasy Intellectual Property Firm focuses on trademark field.
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