Stricter application of absolute grounds
Over the summer, trademark practitioners in China have noted a marked stricter application by CNIPA of the absolute grounds for trademark refusal, summed up in articles 10 and 11 of China’s Trademark Law. While it remains unclear what the reasons are behind this recent change, some practitioners have suggested that it could be a new way for CNIPA to deal with the ever-increasing number of trademark applications in China and with the ensuing increasingly overpopulated Chinese trademark register.
The grounds which now seem to be increasingly relied on by CNIPA to reject applications are those for descriptive signs, deceptive signs and signs “detrimental to socialist morality and customs or having other ill effects”. CNIPA now seems to increasingly reject applications containing dictionary terms, even for classes of goods and services entirely unrelated to such terms, and seems to interpret the categories of deceptive signs and signs with ill effects broader than before. Some very recent examples can be seen below:
|Mark Applied For
||Classes of Goods/Services
||Reason of Refusal
||11 (lighting, heating and cooling equipment etc.) & 20 (furniture etc.)
||Undesirable social consequences.
||9 (software etc.) and 42 (IT services etc.)
||Deceptive, incorrect reference to characteristics products/services, which would imply to be related to heating/cooling equipment.
||1 (chemicals etc.) 3 (cosmetics etc.) 32 (beers and beverages etc.)
||misleading for goods and products unrelated to hops, descriptive for beers and drinks produced with hops.
||9 (scientific apparatus, software etc.)
||misleading as to characteristics of the products and not distinctive.
Caution, preparation and appeal if necessary.
The recent wave of rejections by CNIPA may in some cases seem to be based on an overly strict application of the absolute grounds for refusal. Trademark applicants in China who risk being faced with such rejection should therefore be aware of this new practice, factor it into their prosecution strategy and prepare to appeal refusals for key trademarks to the courts, which remain likely unaffected by the CNIPA policy change.
Authored by Stefaan Meuwissen and Helen Xia.