Article 10, paragraph 1, item (7) of the Trademark Law stipulates that the signs having the name of fraud which is likely to cause misunderstanding of the characteristics, such as quality of the goods or origin of production, etc., among the relevant public shall not be used as trademarks.
For word trademarks, this usually refers to the meaning of the trademark being "deceptive" and therefore likely to lead to "misunderstanding" of the characteristics of the goods or services. According to the current practice, the China National Intellectual Property Administration (CNIPA) adopts strict examination criteria on this article. As long as the examiner holds the words bear a special meaning, which may lead to "misunderstanding" of the characteristics of the goods or services among relevant public, there is high risk that the trademark application will be rejected due to this article (rejection based on absolute ground). However, as for some foreign language trademarks, actually the Chinese relevant public does not understand the meaning of the composing words of the trademarks. In such case, how should we understand the meaning and apply the article? There are further explanationsregarding the "misunderstanding issue", listed below:
1. The Provision of the Supreme People's Court on Several Issues concerning the Trial of Administrative Cases Involving Trademark Authorization and Confirmation stipulates in Article 8: When the disputed trademark is in a foreign language, the people's court should examine and determine 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 if the relevant public has a low level of awareness of this inherent meaning and can identify the origin of the goods by the mark, it can be determined that the mark has distinctive features.
2. According to Article 8.4 of the "Guidelines for the Trial of Administrative Cases Involving Trademark Authorization and Confirmation" issued by the Supreme People's Court regarding the determination of "deception": If the public, based on daily life experience, will not mistake the quality or origin of the goods or services specified for the disputed trademark, it does not fall under the provision of Article 10(7) of the Trademark Law.
3. Regarding the interpretation and application of Article 10.1.(7) of the Trademark Law, the CNIPA mentioned in its interpretation of the newly revised "Guidelines for Trademark Examination and Adjudication" that "if the public, based on daily life experience, will not mistake the quality or origin of the goods or services specified by the mark, it does not fall under this provision."
To well understand the explanations, let us see the following precedent:
【Precedent】
In the trademark rejection case No. 18550127, the rejection reason given by the Trademark Office was that the applied trademark "MobileCam" could be translated as "moving camshaft" and when used on the designated goods, such as monitors [computer hardware]; cameras [photography]; Electronic chip, etc. , it could easily lead misunderstanding among the consumers. After a reviewprocedure, the rejection decision was upheld.
The applicant filed an administrative lawsuit against the review of rejection decision to the Beijing Intellectual Property Court (hereinafter referred to as "Beijing IP Court"). In the first instance judgment, the Beijing IP Court ruled that the disputed trademark "MobileCam" could be translated as "moving camshaft". The designated goods for the disputed trademark included "electronic surveillance devices, cameras," etc. According to the general understanding of the public, these goods may or may not contain a "camshaft" component. Therefore, using the disputed trademark on the designated goods could lead the relevant public to mistakenly believe that the products contain a "camshaft" component, thereby causing misunderstanding about the quality and other characteristics of the products.
The applicant was not satisfied with this judgment and appealed to the Beijing Higher People's Court (hereinafter referred to as "Beijing Higher Court"). In the second instance judgment, it was determined that the textual part "MobileCam" could be translated as "moving camshaft". "Camshaft" generally refers to a mechanical rotating or sliding component, which is a relatively professional term in the mechanical field that the general public may not be familiar with. According to the common understanding of the public, it is likely to be interpreted as a meaningless coined term. The English words "MobileCam" used on goods such as "electronic surveillance devices, cameras" do not hide the truth about the quality, main components, functions, and purposes of the disputed goods, are not deceptive, and do not lead the relevant public to have an incorrect understanding of the products. Therefore, the Beijing Higher Court ruled to revoke the review of rejection decision and the first-instance judgment.
【Comments】
In the above-mentioned case, the text part of the trademark applied for is "MobileCam", although there is no space, the two capital letters clearly separate the trademark into two parts, namely "Mobile" and "Cam". Among these two English words, "Mobile" is a common English vocabulary, and its meaning is relatively certain, generally translated as "移动的" (mobile). The key point is how to interpret and understand the part "Cam". According to the argument in the final judgment of the Higher People's Court, "whether a trademark symbol is deceptive refers to the inconsistency between the meaning and content of the symbol and the attributes of the goods themselves, which is sufficient to cause the public to have a wrong understanding of the description of the goods. To judge whether the relevant symbol is 'deceptive', it should start from the general cognitive level and cognitive ability of the public, define the specific content of the symbol accordingly, and interpret it through reference books or symbols with fixed meanings already formed by the public." The content of the second instance judgment, starting from the "usual understanding of the relevant public in China" and considering the "degree of recognition" of the "inherent meaning" of foreign language symbols by the relevant public, interprets "Cam" as a meaningless fabricated word rather than the "cam" which is a mechanical professional term as determined in the review decision and the first instance judgment.
According to the above provisions or explanations as well as the precedent, it can be seen that when conducting trademark examination under Article 10, paragraph 1, item (7) of the Trademark Law, it is necessary to consider whether the trademark symbol is deceptive and easily confused from the perspective of the general public's common sense and normal cognition.If excessive reliance on dictionaries without considering life experience to deduce confusion, it obviously does not conform to the actual cognition of trademarks by the general public. Based on the premise of grasping the general principle of "the usual understanding of the relevant public in China", trademarks should be analyzed specifically by treating the trademark symbol as a whole, combining specific contexts, the foreign language proficiency of the relevant public, and other factors.
This gives us guidelines how to argue if a foreign language trademark was rejected due to misunderstanding issue. Of course, if a foreign language trademark that indeed is deceptive and likely to cause the relevant public to mistake the quality or origin of goods, it cannot be used as trademarks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.