Beijing High People’s Court Guidelines for the Trial of Trademark Right Granting and Verification Cases (2019)

Part II Relevant Substantial Issues

7. Basic Principles

7.1 Application of Article 4 of the Trademark Law

If any trademark applicant obviously lacks the true intention of use and is under any of the following circumstances, this applicant may be determined to violate the provisions of Article 4 of the Trademark Law: (1) applying for registration of the trademark identical with or similar to that of various subject with certain popularity or higher distinctiveness, which is regarded as a serious circumstance; 65 (2) applying for registration of the trademark identical with or similar to that of the same subject with certain popularity or higher distinctiveness, which is regarded as a serious circumstance; (3) applying for registration of the trademark identical with or similar to any other commercial signs other than trademarks of others, which is regarded as a serious circumstance; (4) applying for registration of the trademark identical with or similar to any name of place, scenic spot, building and others with certain popularity, which is regarded as a serious circumstance; (5) applying for registration of a large number of trademarks without good reasons. If the trademark applicant above claims that he has the true intention of use, but fails to present the relevant evidence, this claim shall not be supported.

7.2 Application of principle of honesty and trustworthiness

In an administrative case of trademark rights, any application for registration of the trademark in dispute shall not violate the provisions of Article 7.1 of the Trademark Law.

7.3 Components of marks of the trademarks

The components of the trademark in dispute shall be based on the contents as expressly set out in the trademark registration announcement, the document on application for registration of the trademark, the trademark register or others.

7.4 Acceptance of the transferred trademark not affecting determination of relevant clauses

If an application for registration of the trademark in dispute violates the relevant provisions of the Trademark Law, and the applicant or registrant of the trademark in dispute claims that the trademark in dispute should be registered or remained valid only on the ground that the applicant or registrant has no fault when the trademark transfered, then this claim shall not be supported.

7.5 Processing of any registrant being revoked or canceled

In an administrative case of review of revoked trademark rights and request for invalidation of trademark rights, if the business license of a registrant of the trademark in dispute is revoked or this registrant has been canceled, it is not appropriate to revoke the registration of, or declare the invalidation of trademark in dispute only based on the reason above.

8. Application of Article 10 of the Trademark Law

8.1 General standards of Article 10.1 of the Trademark Law

If the mark of the trademark in dispute has several meanings or methods of use, and one meaning or method of use makes the public easily believe that this mark falls under the circumstances provided in Article 10.1 of the Trademark Law, this trademark in dispute may be determined to violate the provisions of Article 10.1, without considering the use conditions of the trademark in dispute in general.

8.2 Marks containing “the People’s Republic of China” 

The mark of the trademark in dispute contains, but as a whole is not identical with or similar to, the words of the People’s Republic of China and so on, if registration of this mark as a trademark would damage the dignity of China, then this mark may be determined to fall under the circumstances provided in Article 10.1.8.

8.3 Marks containing a foreign country name

The name of a foreign country includes the full or abbreviated name in Chinese and foreign language of this country, and the official documents and others may be used as the basis for determining the foreign country name. The mark of the trademark in dispute contains, but as a whole is non-identical with or dissimilar to a foreign country name, if registration of this mark as a trademark would harm the dignity of this country, then it may be determined to fall under the circumstances provided in Article 10.1.8. The following circumstances may be presumed to be “with the consent of such country's government”, except for evidence to the contrary: (1) where the party concerned has submitted the documents that this country's government consents to application for registration of the trademark in dispute;

(2) where the party concerned has submitted the documents that the same applicant has been approved in this country to register the trademark in dispute on the identical goods or services. 8.4 Determination of “fraudulence” 

If the public does not misidentify the quality and other characteristics or origins of the goods or services designated by the trademark in dispute on the basis of their daily life experience and others, this trademark does not fall under the circumstances provided in Article 10.1.7 of the Trademark Law.

8.5 Registration of trademarks using the corporate names

If a trademark in dispute contains the full or abbreviated name of a company, and there is any substantial difference between the applicant’s entity and the full or abbreviated name, where it is easy for the public to misidentify the sources of goods or services, this trademark may be determined to fall under the circumstances provided in Article 10.1.7 of the Trademark Law.

If the mark of the trademark in dispute is composed only of the full or abbreviated corporate name of the applicant, or its distinctive identification part is only the full or abbreviated corporate name, where this trademark does not fall under the circumstance provided in the preceding paragraph, it may be determined to fall under the circumstances provided in Article 11.1.3, except for trademarks with distinctive characteristics and in line with the commercial practice. The prerequisite of determination of the full or abbreviated corporate name above is that it is easy for the public to deem the name as the sign indicating the entity identification of a company.

8.6 Judgment factors of “any other adverse effect” 

If the mark of the trademark in dispute or its components could be confirmed to have any negative or adverse effect on the public interests and order of China according to the daily life experience of the public, or the official documents such as dictionaries and reference books, or the common knowledge of the people in the field of religion and others, it may be determined to have “any other adverse effect” provided in Article 10.1.8 of the Trademark Law. The subjective intention, methods of use, results of damage and others of the party concerned may be taken as the reference factors for determining whether there is “any other adverse effect”. 

8.7 Time of judgment of “any other adverse effect” 

When examining and judging whether the mark of the trademark in dispute or any of its components has “any other adverse effect”, the examination and judgment shall be subject to the state of facts at the time of application for registration of the trademark in dispute in general. If the state of facts at the time of approval of registration changes, the examination and judgment are subject to the state of facts at the time of registration approval.

8.8 Protection of the deceased personalities

If the mark of the trademark in dispute or any of its components is identical with or similar to the name, portrait or others of a deceased personality in a specific industry or region, as a result of which the public misidentifies the quality, reputation, craftsmanship and other characteristics of the goods or services designated by the trademark in dispute, then this trademark may be determined to fall under the circumstances provided in Article 10.1.7 of the Trademark Law. If the mark of the trademark in dispute or any of its components is identical with or similar to the name, portrait and others of a deceased personality in the fields such as politics, economy, culture, religion and nation, then this trademark shall be determined to have “any other adverse effect” provided in Article 10.1.8 of the Trademark Law.

8.9 Determination of the “standard use of words” 

If the mark of the trademark in dispute or any of its components fails to use Chinese characters or idioms in a standardized manner, which would have any negative or adverse effect on China's cultural education, then this trademark may be determined to have “any other adverse effect”.

8.10 Other meanings of trademarks using geographical names

If the mark of the trademark in dispute or any of its components contains the geographical names of administrative regions of county level or above or overseas geographical names well known by the public, but has other meanings as a whole, then this trademark may be determined to fall outside the circumstances provided in Article 10.2 of the Trademark Law.

The trademarks in dispute under the following circumstances may be determined to have other meanings: (1) if the trademark in dispute is composed only of a geographical name with other meanings; (2) if the trademark in dispute contains a geographical name, but can be distinguished from the geographical name as a whole; or (3) if the trademark in dispute contains a geographical name, and cannot be distinguished from the geographical name as a whole, but it is enough for the public to distinguish it from the geographical name through use.

8.11 Judgment of extension registration of the approved trademarks using “geographical names” 

Any trademark using any geographical name that was registered prior to the prohibition by the Trademark Law on the registration or use of any geographical name as trademark shall remain in effect within its original scope of registration.. If the party concerned claims the application for other trademarks based on such trademark with the geographical names, this claim shall not be supported in general.

9. Application of Article 11 of the Trademark Law

9.1 Subjects

When judging whether a trademark in dispute has distinctive characteristics, the subjects shall be the customers in connection with the goods or services designated by this trademark and other business dealers closely related to the marketing of the goods or services above and other relevant public.

9.2 Application of clauses

If a disputed ruling just summarily states that the trademark in dispute falls under the circumstances provided in Article 11.1 of the Trademark Law instead of the specific circumstances provided in first, second or third paragraph of Article 11.1 of the Trademark Law, and the party concerned claims that the applicable law is wrong, this claim may be supported.

9.3 Concurrent application of specific clauses

The first, second or third paragraph of Articles 11.1 respectively provides the circumstances that the mark of the trademark in dispute has no distinctive characteristics, in determining whether the identical trademark has distinctive characteristics on the identical goods, it is generally not appropriate for concurrent application of specific clauses.

9.4 Determination scope of distinctive characteristics

If the mark of the trademark in dispute cannot be recognized by the relevant public as the trademark, its designated use will have no distinctive characteristics on any goods. If a trademark in dispute only describes the quality, quantity and other characteristics of the goods designed by this trademark, then it will have no distinctive characteristics on such goods.

9.5 Determination of distinctiveness of new type trademarks 

When determining whether the mark for color combination or sound, or the three-dimensional mark embodied in the form of the goods’ own shape, packaging and decoration has distinctive characteristics or not, there is no need to judge whether such mark is independently created or used at the earliest by the party concerned.

9.6 Determination of other circumstances of lacking distinctive characteristics

If a trademark in dispute is composed only of advertising slogans, it generally falls under the circumstances provided in Article 11.1.3 of the Trademark Law.

9.7 Determination of “the second meaning” 

If a party concerned claims that the mark of the trademark in dispute obtains distinctive characteristics through use, this trademark may be determined by considering the following factors: (1) the use of the mark of the trademark in dispute is sufficient to enable it to play a role in identifying the source of the relevant goods; (2) the time, territory, scope, scale, popularity and others of the use of the mark of the trademark in dispute; and (3) the conditions on the use of the mark of the trademark in dispute by other business dealers. If the mark of the trademark in dispute is determined to obtain distinctive characteristics through use, this trademark shall only apply to the goods using such mark other than the similar goods.

9.8 Judgment of distinctive characteristics of three-dimensional marks

If a trademark in dispute contains a tree-dimensional mark, it shall be judged as a whole whether the trademarkhas distinctive characteristics or not. In general, this trademark may not be determined to have distinctive characteristics only 

because it contains any words, pictures and other factors. 

photo from: Beijing High People's Court