In recent years, more and more foreign companies have entered the Chinese market, and a foreign language trademark has become an important symbol indicating the origin of goods or services.  However, if the foreign language trademark is chosen improperly, it may be subject to rejection due to lack of distinctiveness, which is happened often.

According to Article 8 of the Provisions of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases of Trademark Authorization and Confirmation, when the disputed trademark is in a foreign language, the people's court shall examine and judge whether the foreign language trademark has distinctive features based on the usual understanding of the relevant public in China. The inherent meaning of the foreign language in the mark may affect its distinctive features on the designated goods, but the degree of recognition of this inherent meaning by the relevant public is low, and thus if the mark can be used to identify the source of goods, it can be considered to have distinctive features.

How should we understand the above provisions in the practice of trademark examination?  Let us learn the examination criteria from following two precedents.

Precedent 1: The international trademark under IR. No. 1151247 " "

The International Registration No. 1151247 "OR ROUGE" trademark was initially applied for and approved for registration in the European Union.  The registrant, L'OREAL (U.K.) LIMITED applied for territorial extension protection of the trademark in China over the goods cosmetics and other goods in Class 3. The CNIPA issued a rejection notice to the International Bureau of the World Intellectual Property Organization, rejecting the application for territorial extension protection of the trademark in China for all designated goods. The reason for rejection was that the French meaning of the disputed trademark "OR ROUGE" is "gold, red," which indicates the characteristics of the designated goods so lacks distinctiveness. L'Oréal disagreed with the aforementioned decision of the CNIPA and subsequently filed an application for review, as well as first and second instance lawsuits.

- The Beijing Intellectual Property Court held that the trademark "OR ROUGE" is not easily recognized its French meaning by Chinese consumers, and even if the trademark is translated as a French word, its meaning "gold, red" does not solely represent the characteristics of the designated cosmetics and other goods. Therefore, the use of the trademark on the designated goods does not violate Article 11(2) of the Chinese Trademark Law, which states that "signs that only directly represent the quality, main ingredients, functions, uses, weight, quantity, and other characteristics of goods cannot be registered as trademarks."

-  The Beijing High People's Court, held that the trademark "OR ROUGE" in French means "gold, red."  From the perspective of cognitive habits, the relevant Chinese public is not easily able to identify its aforementioned meaning, and at the same time, the designated goods for the disputed trademark are cosmetics and others, which do not directly represent the characteristics of the relevant goods and thus do not meet the requirements of Article 11(2) of the Chinese Trademark Law.

Comments

The characteristic of the case is that trademark contains text that the public finds difficult to recognize.

In the case, both the first-instance and second-instance courts considered 1) the level of public awareness of the foreign language in China, and believed that the relevant public was not easily able to understand the meaning of the foreign language. At the same time, they also considered 2) whether the use of the foreign language directly represented the quality, function, and other characteristics of the designated goods.  They determined that the foreign language trademark did not directly represent the characteristics of the relevant goods, and therefore concluded that the trademark did not meet the requirements stipulated in Article 11(1)(2) of the Chinese Trademark Law.  As a result, the trademark obtained protection in China for the designated goods.

Precedent 2: The trademark registration under No. 33606709 " "

In the review of refusal for the mark "ModelArts" under No. 33606709, the CNIPA believed that "the applied trademark consists of the English words 'MODELARTS', which can easily be understood by the relevant public as 'model arts'. It is not easy for consumers to identify it as a trademark for cloud computing, information technology consulting, and other services in Class 42. It lacks the distinctive features that a trademark should have and violates the provisions of Article 11.1.3 of the Trademark Law."

- After two administrative litigations, the Beijing Intellectual Property Court and the Beijing High People's Court both ruled to revoke the review decision. The final judgment stated "the trademark consists of the English letters 'ModelArts'.  Depending on the capitalization of the letters, the relevant public easily divides it into two English words with fixed meanings, namely 'Model' and 'Arts'.  The usual Chinese meaning of 'Model' is '模型' (model), which may imply the cloud computing and other services designated by the trademark, but the usual Chinese meaning of 'Arts' is '艺术、美术' (art, fine arts), which is not directly related to the aforementioned services; the overall disputed trademark can be translated as '模型艺术' (model arts), and there is no evidence to prove that this meaning is a common term in cloud computing, information technology consulting services, nor is there any factual evidence to prove that this meaning is a common expression used by industry operators to describe the content or characteristics of the disputed trademark's designated services; the trademark can serve the purpose of identifying the source of services and does not fall within the scope referred to in Article 11.1.3 of the Trademark Law.

Comments

Different from the first precedent, the characteristic of the case is the trademark contains the words that can be easily to recognize.

If the trademark application was only for "Model" or "Arts" instead of their combination, the likelihood of it being approved for registration would be very low. However, the court holds that the combination of the two words is not a common expression used to describe a specific services.  In other words, the court believes that combination is not an existing fixed phrase, and did not describe the content of the characteristics of the trademark's designated services or goods; therefore, the relevant public can identify this combination as a trademark. 

Conclusion

The above two cases provide us with insights on how to examine foreign trademarks in different scenarios, namely

1) As for the trademark containing the words that the public finds difficult to recognize, the following factors shall be taken into account when examine:

- The level of public awareness for the foreign language in China, and

- Whether the use of the foreign language directly represented the quality, function, and other characteristics of the designated goods,

2) As for the trademark containing the words that can be easily to recognize, the factors that shall be taken into account when examine:

- Whether the combination is an existing fixed phrase, so it describe the content of the characteristics of the trademark's designated services or goods

After excluding the aforementioned factors, that trademark in foreign language shall be considered as bearing distinctiveness.