The distinctiveness of a trademark refers to the features of distinguishing the source of the goods or services which is a prerequisite for a trademark to be registered.  The distinctiveness of a trademark can be inherent or acquired through usage.  According to Article 11 of China Trademark Law, a sign lacking of inherent distinctiveness cannot be registered as a trademark unless it has acquired distinctiveness through usage. In this article, we will discuss the types of trademarks that lack distinctiveness and the evidence that can prove a trademark has acquired distinctiveness through usage.

Classification of the degree of the distinctiveness of a Trademark

There are the five classifications of degree of the distinctiveness, from highest to lowest.

Fanciful Trademark: consists of words or combinations that have no meaning, such as "GOOGLE" and "KODAK".

Arbitrary Trademark: consists of words or combinations that have meanings unrelated to the specified goods or services, such as "YAHOO" and "APPLE".

Suggestive Trademark: implies the nature or quality, etc. of the goods or services, but requires some imagination to understand, such as the trademark, "365" for a convenience store which implies the operating hours.

Descriptive Trademark: directly describes the function, quality, ingredients, etc. of the goods or services, such as "SAFETY" for goods like "Leakage protector".  

Generic Trademark: consists of common words for goods or services, such as "MULLER" for goods, "muller". 

For fanciful trademark and arbitrary trademark are considered as inherently distinctive trademarks and could be registered as trademark; while suggestive, descriptive and generic trademarks lack distinctiveness and are difficult to be successfully registered as trademark in China.

Legal Grounds

Article 11.1 of China Trademark Law stipulates that "The following signs shall not be registered as trademarks: (1) a mark which merely states the generic name, figure or model number of the commodities; (2) a mark which merely directly expresses the quality, key ingredients, functions, purposes, weight, quantity and other characteristics of the commodities; or (3) Other circumstances that a mark lacks distinctive features ".

For the marks referred to in Articles 11.1(1) and 11.1(2), they specifically refer to the descriptive trademark and generic trademark mentioned above.

For mark referred to in Article 11.1(3) of "Other circumstances that a mark lacks distinctive features", such typical trademarks are basically comprising of too complex elements, or overly simple lines, graphics, letters or numbers, etc., phrases or sentences indicating the features of goods or services, or advertising phrases , etc., such as ,  .  They cannot be registered as trademarks due to lacking of distinctiveness and will be rejected by the National Intellectual Property Administration, PRC (CNIPA).

However, Article 11.2 provides the exception, which states that a trademark that lacks distinctiveness initially can be registered if it gains distinctiveness through usage.

Case study

Judgment of Beijing High Court regarding the case No.(2019) Jingxingzhong10069.

Trademark: 财富全球论坛 (English translation is Fortune Global Forum) under App. No. 27568715 in Class 41

Designated services: arranging and conducting of conferences; arranging and conducting of in-person educational forums; arranging and conducting of seminars; arranging and conducting of symposiums; school education services; education; entertainment; entertainment Information; publication of books, etc.

Case summary: This mark was rejected by the CNIPA with the reason that the mark directly indicates the functions and usage of the claimed services, lacking distinctiveness and therefore cannot be registered as a trademark.  The Beijing IP Court upheld the CNIPA's decision.  The registrant, FORTUNE MEDIA IP LIMITED appealed to the Beijing High Court and finally was able to register the trademark over the services, "arranging and conducting of conferences; arranging and conducting of in-person educational forums; arranging and conducting of seminars; arranging and conducting of symposiums".

Beijing High Court held that according to the common understanding of the public, it is easy to read the sign as a symbol that directly indicates the functions, usage of the claimed services.  It lacks the distinctiveness as a trademark.  However, the evidences submitted by the registrant, including social reports about the brand ranking of the subject mark since 1995, iPhone store's screenshots, book publications, etc., can prove that the subject trademark has acquired high reputation among the relevant public over the services, "arranging and conducting of conferences; arranging and conducting of in-person educational forums; arranging and conducting of seminars; arranging and conducting of symposiums" and has formed a corresponding relationship with the registrant and acquired the distinctiveness though usages.  Therefore, the subject trademark does not violate Article 11.1(2) and can be registered as a trademark over the above mentioned four items.  But the subject mark still lacks of distinctiveness and cannot be registered as a trademark over other designated services, as the evidence is not sufficient to prove the use of the mark over such services.

From this case, we learn that the applicant needs to provide the powerful arguments and use evidence to prove that a trademark has been used for long time and is known to the public, thereby being able to distinguish the source of goods/services from others and has acquired distinctiveness.  The standard for this is quite high, and te following evidence and argument should be taken into consideration.

1. Whether the trademark has a secondary meaning. 

It is common for an English trademark to have multiple meanings, and the CNIPA may reject a trademark on the grounds that one of its meanings lacks distinctiveness over the designated goods/services. In such cases, it is important to provide a detailed argument and evidence to prove that the secondary meaning of the trademark is widely recognized in English-speaking society. We can submit the explanations of the trademark in the authoritative English dictionary, such as Oxford Dictionary, as evidence to prove that most common meaning of the trademark is used widely over the English-speaking society.

2. Trademark protection records. 

Such records include the decisions from the CNIPA, Court and Market Supervision and Administration that have recognized the trademark as having acquired certain reputation, or that the trademark has been copied or imitated by third parties, and the registrant has successfully protected their trademark right.

3. Use evidence to prove that a trademark has been used for long time and is known to the public.

The applicant needs to submit the use evidence, including sales evidence, promotional evidence, exhibition use evidence, etc. to prove that the trademark has been used for long time that it is known to the public.  The evidence includes copies of contracts, invoices, bills of landing, bank records, customs import/export receipts, etc., copies of photos/pictures, documents, contracts and invoices of TV / radio / newspaper / magazine / internet / outdoor advertising, etc., copies of photos/pictures, documents, contracts and invoices of exhibitions, etc.

Conclusion: For saving the time, money and efforts, we strongly advise our client to carefully select their trademarks to avoid the potential rejection under Article 11.1.  However, if the trademark lacking of distinctiveness has been used for many years and is important to the client, we recommend collecting as much evidence of use as possible to prove that the mark has acquired distinctiveness through usages during the review of refusal stage.