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In order to facilitate the public and trademark practitioners to better understand the Guide to Trademark Examination and Adjudication (hereinafter referred to as the Guide) and respond to social concerns, the Trademark Office of the State Intellectual Property Office has sorted out questions and answers on some key issues in the formulation of the Guide.

The fourth chapter of the second part of the Guide is "Examination and trial of distinctive Characteristics of Trademarks", which is modified and supplemented on the basis of the corresponding chapters of the Trademark Examination and Trial Standards (formulated and published in 2005, and revised for the first time in 2016, hereinafter referred to as the 2016 Standard). The relevant issues are interpreted as follows:

1. Q: Why is there a new explanation of the concepts related to the distinctive features of trademarks in the Guide?

A: Article 9 of the Trademark Law stipulates that "the trademark applied for registration shall have distinctive features and be easy to identify", and Article 11 of the Trademark Law stipulates that the lack of distinctive features shall not be used as a sign for trademark registration. Distinctiveness is the basic attribute of trademark. The trademark applied for registration should have distinctiveness. The standard rules of trademark distinctiveness examination and trial should be based on the concept of trademark distinctiveness. The 2016 Standard therefore simply describes the concept of distinctive features of the trademark, that is, "distinctive features of the trademark refer to the characteristics that the trademark should have that are sufficient to enable the relevant public to distinguish the origin of the goods". In the practice of trademark examination and hearing, the bureau found that this concept is too abstract, and it is difficult for examiners to understand and grasp the examination and hearing requirements of trademarks with significant characteristics. Therefore, with reference to relevant practice and theoretical research, the Guide improves the expression of concepts related to the distinctive characteristics of trademarks:

First, it is clear that the distinctive features of the trademark refer to "the characteristics that the trademark should have that are sufficient to enable the relevant public to distinguish the source of goods or services", specifically, it means that "the trademark can enable consumers to identify and remember, and can play the function and role of indicating the source of goods or services". That is, the trademark logo itself should ensure that it is easy to identify, so that consumers have an impression of it, and this impression is retained in the memory, in order to ultimately play a role in distinguishing the source of goods or services. For example, it is difficult for consumers to recognize and remember overly complex words or graphics, and if it is used as a trademark, it cannot distinguish the source of goods or services, and it does not have the significant characteristics of a trademark.

The second is to explain the meaning of the terms related to the distinctive features of the trademark referred to in Article 11 of the Trademark Law, including "only", "the commodity", "general name, figure, model", "only direct expression", "quality", "main raw materials", "function", "use", "weight", "quantity" and other characteristics.

The third is to state that the distinctiveness of a trademark can be obtained in two ways: inherent distinctiveness and distinctiveness obtained through use.

On the one hand, in order to urge trademark examiners to better grasp the connotation and extension of trademark distinctive features, and more accurately determine whether trademarks have distinctive features and whether they can be registered, so as to ensure the consistency of standard implementation and the correctness of examination conclusions, and improve the quality of examination; On the other hand, it also reminds the applicant to choose a sign with more prominent characteristics when applying for a registered trademark.

2. Q: What are the considerations for adding service marks without distinguishing features?

A: Compared with the 2016 Standard, the Guide adds a lot of content related to the examination of distinctive characteristics of service marks. Trademark examination takes into account the class of goods or services specified in the trademark registration application. Article 11 of the Trademark Law only mentions the absence of distinctive features of goods trademarks, and does not mention services. The 2016 Standard also focuses on the examination of trademark significance with commodity trademarks as the core, but lists examples of service marks lacking significant features. However, Article 4 (2) of the Trademark Law stipulates that "the provisions of this Law concerning commodity trademarks shall apply to service marks".

In recent years, with the improvement of productivity and the continuous progress of society, the proportion of the tertiary industry in the national economy is getting larger and larger, which is reflected in the field of trademarks, which is reflected in the continuous rapid growth of the number of service trademark applications. In 2020, the number of trademark applications in China reached 9.116 million, of which more than 2 million trademark registration applications were designated for services such as Class 35 advertising.

In order to adapt to the above changes, the Guide has added in this chapter the interpretation of significant features related to services, such as "' quality 'refers to the quality of goods or services"; The relevant explanations and cases related to the judgment of distinctive features of service class trademarks are supplemented, such as the addition of cases in which the logo only indicates the generic name of the specified service, the generic graphics, or only indicates the quality of the specified service, but lacks distinctive features.

3. Q: What other considerations have been added to the Guide for situations lacking significant features?

A: With the increasing development of commodity economy and the rapid emergence of new business forms and models, the 2016 Standard has lagged behind the review and trial practice. The types of "other trademarks lacking distinctive characteristics" as stipulated in Article 11, paragraph 1 (3) of the Trademark Law are increasing. In order to adapt to the development needs of new technologies and new forms of business, the Guide comprehensively summarizes the practical experience of trademark examination in recent years, refines and supplements other cases that are more common in practice and expands other cases lacking significant features from 11 categories in the 2016 Standard to 16 categories:

One is to modify the distinctiveness of the packaging, container or decorative pattern of the goods specified in the trademark. The 2016 Standard states that the "commonly used" packaging, container or decorative pattern designated to use the goods as a trademark lacks the due distinctive characteristics, and the Guide further specifies that the outer packaging of the goods "ordinary consumers will not regard it as a trademark sign to distinguish the source of goods or services" does not have the distinctive characteristics of the trademark. The containers or decorative patterns of the goods themselves do not have the distinctive characteristics of a trademark.

Second, combined with practice, it is clear that "daily words", "network buzzwords and network popular memes" and "aphorisms" are part of the daily expression of the public and do not have the significant characteristics of trademarks.

Third, it is clear that "only the full name of the applicant (excluding natural persons)" signs, "commonly used symbols" and "festival names" are difficult to be identified as trademarks, and lack the significant characteristics that trademarks should have. The so-called commonly used symbols include all kinds of common symbols in daily life or work; The so-called festival names include not only legal festival names, but also customary festival names.

Of course, the Guide cannot enumerate all cases in which the sign "lacks a distinctive feature." Specific to a sign is lack of significant characteristics, in the review and trial practice still need to be combined with the actual situation to judge the case. According to the new situation of commercial activities, new trends in trademark application behavior and new needs of examination work, the Guide will continue to update the lack of distinctive characteristics of the mark, to provide clearer guidance for trademark practitioners and the public.

4. Q: If the logo is the full name of the enterprise name, how to judge its significance?

A: In this chapter, 3.3.9 "Organizational form, industry name or abbreviation of the enterprise" and 3.3.10 "Only the full name of the applicant (excluding natural persons)" stipulate the issue of how to judge the significance of the logo for the enterprise name.

In general, only the full name of the applicant (excluding natural persons) does not have the distinctive characteristics of the trademark, except those with graphic and other elements that make the whole have distinctive characteristics.

However, it is worth noting that in recent years, more and more universities, research institutes, hospitals, social groups and other institutions or other organizations have registered their full name as a trademark, on the one hand to fight infringement, on the other hand, the use of trademarks to actively expand the brand value of their names, and increase the use of intangible assets. If the full name of some public institutions or other organizations has been used for a long time, has a high reputation, and has produced a one-to-one correspondence with the goods or services actually used by relevant public institutions or other organizations, which will not cause confusion and misidentification by consumers, and can identify the source of goods or services, it shall be regarded as having the distinctive characteristics of the trademark.

For example, designating the “”sign on school education, book publishing and other services, designating the“”sign on hospital, medical care, educational assessment and other services.

5. Q: Why has the Guide revised the criteria for identifying distinctiveness of trademarks that do not have distinctive characteristics?

A: The second part of the 2016 Standard "Examination of Distinctive Features of trademarks" stipulates that a trademark is composed of signs and other elements that do not have distinctive features, and other elements or trademarks as a whole can play a role in distinguishing the source of goods and services, then the trademark has distinctive features.

However, in practice, the graphic part and the text part are independently composed, and the graphic part has certain significant features, while the text part lacks significant features. If the trademark is directly identified as having significant features only because the graphic part has significant features, there are a series of problems: First, this recognition method is contrary to the principle of the overall recognition of trademark significance, and easily leads to the ambiguity of the scope of trademark right protection; Second, in practice, some trademark registrants use such trademarks to blackmail or launch malicious infringement complaints on e-commerce platforms; Third, this standard is also inconsistent with the current practice of trademark authorization and confirmation. In relevant trademark administrative or judicial cases, it is generally believed that the trademark is composed of an image alone, the text part is the main calling part of the trademark, and the text part lacks significant features, the trademark as a whole should be identified as lacking significant features.

Therefore, after combing and summarizing relevant cases, after soliciting the opinions of courts and scholars at all levels, and after many discussions, the Guide updated the criteria for identifying the distinctness of trademarks that do not have distinctive features, clearly pointing out that "if a trademark consists of an independent text part and independent other elements, and the text part does not have distinctive features, the trademark as a whole should be identified as lacking distinctive features". At the same time, in order to fully protect the rights and interests of the applicant and restrict the conduct of trademark examination and trial, the Guide points out that "if other elements have strong and significant characteristics, the trademark registration department believes that it is possible to distinguish the source of goods or services according to the elements, it can issue a review opinion, requiring the applicant to give up the exclusive right to use the part of the text that lacks significant characteristics." Where the applicant does not give up or fails to reply to the examination opinion within the prescribed time limit, the application for trademark registration shall be rejected."

Related links：Announcement of the State Intellectual Property Office on Issuing the Guidelines for Trademark Examination and Adjudication (No. 462) 

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