Distinctiveness is the attribute of a trademark which distinguishes different sources of goods and services. It is the core feature of a trademark and a vital part of its successful existence. As a trademark is designed, its distinctiveness is inherent. Some trademarks have good innate qualifications and strong distinctiveness. For example, words without any meaning or highly original graphics, like Haier, Kodak, or . Some trademarks describe the content of goods or services, such as "colorful cotton" designated for use in clothing goods, "famous car repair" designated for use in car repair services, etc., such trademarks lack distinctiveness and are inherently weak. But is such a trademark totally unprotectable?

    Not completely, as diligent efforts are often rewarded. Trademarks owners have the opportunity to gain or enhance the distinctiveness of their marks, so that they can be registered and protected.

    Article 11 of China’s Trademark Law stipulates:

    The following marks are not permitted to be registered as a trademark:

    1) Names, devices of designs that are generic to a class or group of goods;

    2) Marks that merely indicate the quality, principal raw materials, function, use, weight, quantity or other features of the goods in respect of which the marks are used;

    3) Other marks that lack distinctive characteristics.

    A mark to which the above provisions are applicable but which has acquired distinctiveness through use and is readily distinguishable may be registrable as a trademark.

    Some marks inherently lack distinctiveness. They are only general or descriptive marks. However, if after a long period of extensive use and publicity by right holders, consumers gradually recognize these marks to indicate the origin of specific goods or services, and not simply as a description of goods or services, then these marks gain the function of indicating the source of goods or services. In this way, universal and descriptive marks that have no "inherent distinctiveness" will acquire distinctiveness and obtain registration protection. Whether a weak trademark can acquire distinctiveness and obtain registration protection depends on the trademark owner’s efforts.

    "Sour Yogurt" Trademark Case

    On February 16, 2006, in Mengniu Dairy Company v. Dong Jianjun, owner of Wukesong Supermarket in Xincheng District, Hohhot, and Henan Anyang Baixue Princess Dairy Co., Ltd., heard by the Intermediate People’s Court of Hohhot City to decide on trademark infringement and unfair competition of the "yogurt" lactic acid bacteria beverage, the court held that Mengniu Dairy Company has prominently and extensively used the "Sour Milk" trademark on its milk beverages since 2000, and it has been in use for nearly 6 years. Although the trademark contains words such as "sour" and "milk" that indicate product characteristics and main raw materials, Mengniu Dairy Company has continued to use the trademark to publicize and promote the trademark, especially during the 2005 "Mengniu Sour Milk Super Girl" campaign, causing the trademark to reach a level of widespread awareness, and the "Sour Yogurt" trademark is identified as an unregistered well-known trademark. Subsequently, the mark (Sour Yogurt) was registered with the Trademark Office.

    "Six Walnuts" Trademark Case

    The trademark No. 5127315 "Six Walnuts" registered by Hebei Yangyuan Zhihui Beverage Co., Ltd. specifies the products used in Class 32 of "plant beverages, soy milk" and other goods. The trademark was opposed by others during the preliminary review publication period. Those opposing the registration of the mark believed that the application for registration of "six walnuts" as a trademark indicates that the product uses walnuts as the main raw material, which violates Article 11, paragraph 1, item (2), and Article 10, paragraph 1, item (7), of the Trademark Law.

    In May 2011, the Trademark Review and Adjudication Board ruled that the opposed trademark has been able to distinguish the source of goods through extensive publicity and use by Yangyuan, and thus obtain distinctive features of the trademark, which complies with the provisions of Article 11, Paragraph 2 of the Trademark Law.

    During the litigation stage, both the first and second instance courts determined that the trademark "Six Walnuts" acquired distinctiveness, which complied with the provisions of Article 11, Paragraph 2 of the Trademark Law. The court found that: "The evidence provided by Yangyuan Company can prove that the sales area of products with the opposed trademark "Six Walnuts" covers at least 13 provinces and municipalities across the country; Yangyuan Company hired Mei Ting and Chen Luyu as spokesperson for the opposed "Six Walnuts" trademarks, publishing advertisements in many newspapers, supermarket signs, highway signs, buses, etc.; through use, "Six Walnuts" have obtained a consumers’ trustworthy product honor certificate and was identified by the Hebei Province Administration for Industry and Commerce as a well-known product; Yangyuan Company also provided 30 protected records of the "Six Walnuts" in Hebei, Henan, Shandong and other places in the Administration for Industry and Commerce. According to the above facts, the opposed trademark has acquired distinctive features through use. It is easy to identify and can be registered as a trademark."

    "WeChat" trademark case

    On November 12, 2010, Chuangbo Asia Pacific (Shandong) Technology Co., Ltd. applied to the Trademark Office of the State Administration for Industry and Commerce to register the "WeChat" trademark, and passed the preliminary examination on August 27, 2011, designating the trademark for information transmission, telephone business and other services.

    The WeChat 1.0 beta version was released on January 21, 2011. Three days later, Tencent officially submitted an application for the registration of the "WeChat" graphic trademark to the Trademark Office.

    During the statutory opposition period, the natural person Zhang filed an objection to Chuangbo’s registered "WeChat" trademark, believing that the trademark violated Article 10, paragraph 1, item (8) of the Trademark Law and had other adverse effects.

    The case was ruled by the Trademark Office and the Trademark Review and Adjudication Board, and the opposed trademark was not approved for registration. The objected person refused to accept the ruling and filed an administrative lawsuit. After hearings by the two levels of courts, the final judgment of the court of second instance held that although the application for registration of the opposed trademark did not violate the provisions of Article 10, paragraph 1, item (8) of the Trademark Law, that is, it did not have adverse effects. However, the opposed trademark consists of the Chinese word "WeChat" and is designated for use in "information transmission, telephone service, telephone communication, mobile phone communication, e-mail, fax transmission, telecommunications information, and provision of global computer network user access services (service providers), provide telecommunication channels and voice mail services for telephone shopping. "Wei" has meanings such as "small" and "less". When used in combination with the word "xin" (message, letter) in the above service items, it is easy for the relevant public to understand it as being shorter than common communication methods such as email and mobile phone text messages. Convenient information communication methods are direct descriptions of the above-mentioned service functions, uses or other characteristics, and are not easily recognized and treated by the relevant public as trademarks that distinguish service sources. Therefore, the opposed trademark lacks distinctive features in the above-mentioned service items. It belongs to the situation referred to in Item (2) of Article 11, Paragraph 1, of the Trademark Law. The evidence submitted by Chuangbo Asia-Pacific Company is insufficient to prove that the opposed trademark has been used and has established a stable relationship with Chuangbo Asia-Pacific Company, so that the opposed trademark can distinguish the source of services and constitute Article 10 of the "Trademark Law". The second paragraph of Article 2 can be used as trademark registration. Therefore, the opposed trademark should not be approved for registration.

    In the "WeChat" trademark case, the "WeChat" trademark applied by Chuangbo for registration describes the function, purpose or other characteristics of specific services, and therefore lacks the inherent distinctiveness. And various evidence shows that Chuangbo did not put the "WeChat" trademark on the market to make it distinctive and make consumers associate the trademark with it. Therefore, its application for registration of the "WeChat" trademark should not be approved.

    On the contrary, Tencent has made extensive use of the "WeChat" trademark, and consumers have linked the "WeChat" trademark with the information and communication services provided by Tencent. "WeChat" has been given a "second meaning" by Tencent, which has the legal basis for trademark registration and trademark law protection. In the end, Tencent's   trademark was finally registered.

    Judging from the above-mentioned trademark cases, trademarks with inherently insufficient distinctiveness require extensive publicity and use by the right holder before they have the opportunity to obtain registration. Therefore, it is recommended that when selecting trademarks, companies should give priority to those with inherently strong distinctiveness. However, if you insist on choosing those trademarks that are inherently weak, do not be discouraged. They must insist on extensive publicity and use and pay attention to the preservation of evidence of use in order to facilitate the follow-up. Obtain the right to register and provide sufficient evidence to support it.

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