China-Trademark Examination and Trial Guidelines on Trademarks Containing a City’s Name

Entering into 2022, China National Intellectual Property Administration newly issued Trademark Examination and Trial Guidelines slightly revised the previous Guidelines.

 

Regarding the question of a trademark containing a city’s name some further guidance is provided under the case law and practice evolving under the revised Guidelines:  

 

Marks which contain foreign geographical names but are finally approved for registration by the CNIPA often have the following characteristics:

 

l                      The geographical name is in smaller size than other distinctive word part(s) or device part(s);

l                      The geographical name is just used to indicate the origin of the goods/services and is consistent with the location of the applicant;

l                      The marks containing geographical names have been registered in the countries which the geographical names belong to.

 

Ø                      Please see some examples for reference as follows:

 

a.       The mark (listed as an example on the Guidelines) “” contains “GENEVE”, but “GENEVE” is in smaller size than other parts of the trademark. Further, the applicant comes from Geneve and the mark has been registered in Switzerland. Thus, the mark has been approved for registration in China after review of refusal procedure.

 

b.       The mark “” contains “London”, but “London” is in smaller size than other parts. Also in this case, the applicant comes from London and the mark has been registered in the UK. Thus, the mark has been approved for registration in China after review on refusal procedure.

 

c.       The mark “” contains “London”, but “London” is in smaller size than other word parts. Again, the applicant comes from London and the mark has been registered in the UK and other countries. Thus, the mark has been approved for registration in China after review on refusal procedure.

 

d.       The mark “” contains “Tokyo”, but “Tokyo” is in smaller size than other parts, the applicant comes from Tokyo and the mark has been registered in Japan. Thus, the mark has been approved for registration in China after review on refusal procedure.

 

 

Some examples of trademarks not achieving registration due to use of a city name in the trademark:

 

Ø                      Regarding the mark “”, although its applicant came from London, as the geographical name “LONDON” is in larger size than other parts and in a prominent position, the mark was finally refused for registration after review on refusal procedure.     

 

For the mark “”, although “London” is in smaller size than the other word part, as the applicant did not come from London but from ISLE OF MAN, the mark was finally refused for registration after procedure of first instance.