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Registration of "State Names": Never Say Never

DATE:2020-03-05      FROM:LexField

Nancy Zhang

 

  State names or country names are generally prohibited from obtaining trademark registrations in China.

  The absence of a public examination guideline and inconsistent results from CNIPA and the courts lay the groundwork for a possible workaround to the prohibition.

  

  Background

  Case No. 1:

  In May 2016, the CNIPA rejected a trademark application for "" (THULE SWEDEN), filed by a Swedish company named THULE SWEDEN AB, despite being accompanied by the EU Registration Certificate of the same trademark.

 

  Dissatisfied with the decision made by the appeal board of China, the applicant appealed to the Beijing IP Court.  The IP Court maintained the decision of the appeal board of China and held that the EU Registration Certificate did not constitute express consent from the Swedish government to the registration of the geographic term in China.

 

  In the further appeal to the Beijing Higher Court, the applicant submitted a Letter of Consent issued by the Swedish Patent and Designation office to prove consent of the registration in China.  In accepting this Letter of Consent, the Beijing Higher Court decided the trademark be approved for registration.

 

  Case No. 2:

  In June 2019, the CNIPA rejected a trademark application for "瑞士酒店行政公寓" (Swiss Hotel Executive Apartment in Chinese), filed by a Swiss company named SWISSOTEL MANAGEMENT GMBH, even though the applicant submitted the registration certificate of the same trademark in Switzerland.

 

  The CNIPA explained that the applicant did not submit adequate written documents proving the Swiss government expressly consented to the registration of the mark, which contained a Chinese translation of a geographic term, in China.

 

  Case No. 3:

  In September 2019, the China National Intellectual Property Administration ("CNIPA") supported the Review on Refusal against the application for "" filed by a French company named SAVENCIA SA.  The mark consisted of "FRANCE" and the Chinese term which is the Chinese transliteration of France.  In this case, the CNIPA recognized the EU Registration Certificate of the same trademark as the French government’s consent to registration, and thereby decided that the applied-for trademark be approved for registration.

 

  Analysis and Recommendation

 

  Reviewing these cases, they can be hard to rationalize against each other.  The law, as written, takes a very restrictive position.  During administration of the law, there have been uneven practices carried out.  Therefore, the most pragmatic strategy to obtaining a registration of a mark containing a state name is to satisfy all demands at the examination level, if possible.  If not, applicants will need to avail themselves to the court system.

 

  According to the Trademark Law of China, trademarks identical or similar to the "state names" of foreign countries are not eligible for registrations, unless the foreign state government agrees (consents) to their use and registration.  The "state name" mentioned in this Article includes full name, abbreviation, translation, transliteration, and acronym in Chinese or any language.

 

  As applicants attempt to seek trademark registrations of marks containing a "state name", the key issue is the determination of the type of "consent" that will be accepted by the examiner of the application to circumvent the standard refusal.  Since the CNIPA has not published a clear criterion or examination guide in the handling of a state name, it is recommended to take a strategic approach that escalates in degree of difficulty:

Do not include a state name in the trademark

Submit a regional trademark registration, e.g. EU

Submit a national trademark registration

Submit a Letter of Consent from the national government expressly consenting to the registration of the applied for mark in China, e.g. State IP office.

 

  In all cases, it is prudent to maintain close contact with the examiner to ensure you are pursuing the route of least resistance so the application can mature to a registration without delay.

 


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