Law & Practice

CHINA: Key Issues in Deceptive Trademark Cases Clarified

Published: June 9, 2021

Yan Zhang

Yan Zhang Lifang & Partners Law Firm Beijing, China Geographic Indications Committee—GI Governance Subcommittee

Verifier

Albert Tsui

Albert Tsui Dentons Beijing, China INTA Bulletins—Asia-Pacific Subcommittee

The Beijing Intellectual Property Court (BJIPC) held a briefing on March 31, 2021, on administrative cases involving trademark applications that contain deceptive elements. Summarizing different types of deceptive content in trademarks, the BJIPC identified six common factors, along with precedential cases for each.

The BJIPC disclosed that over the past three years, it tried more than 1,000 administrative cases involving refusals to register allegedly deceptive trademarks and upheld over 81 percent of rejections. The low reversal rate demonstrates the consistency between the BJIPC and the Trademark Office on this issue.

The BJIPC explained that under China’s Trademark Law, a trademark is considered deceptive if it contains misleading commodity characteristics (such as quality, components, or technique) or sources (including place of origin and business name). Examples of misleading geographical sources include the following:

  1. A country or place name in an application made by an applicant from another country or place in circumstances where such a name is not subject to the prohibitions under Article 1.1 and Article 10.1.2 of the Trademark Law;
  2. The words comprising the mark suggest a Chinese or foreign geographical name subject to the prohibition under Article 10.2 of the Trademark Law by using similar-sounding or similar-looking words or characters that might mislead the public; and
  3. The mark comprises or contains other geographical names not subject to the prohibition under Article 10.2 of the Trademark Law that might mislead the public.

The BJIPC introduced the following six factors that the court shall take into account when identifying deceptive trademarks:

  1. Deception should be determined objectively, not only by mere subjective intent of an applicant;
  2. Whether the mark is deceptive and misleading should be considered in the context of the designated goods or services;
  3. A likelihood of misleading the public is a requisite factor, but not that the public is actually misled;
  4. The public’s common sense and cognitive ability should be taken into account;
  5. Deception is an absolute, not relative, ground of refusal. The deceptive term shall not apply to cases when a third party’s right is infringed; and
  6. A deceptive mark shall never acquire registrability through use.

This briefing not only clarifies the law pertaining to deceptive marks but also provides leading cases as guidance for practitioners.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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