7 Types of Common Refusals of Protection of Trademarks in China | 7 Types of Common Refusals of Protection of Trademarks in China

7 Types of Common Refusals of Protection of Trademarks in China

Attorney Le Quang Vinh – Bross & Partners

40.8% is the trademark refusal percentage annually concluded by the China National Intellectual Property Administration (CNIPA) during its examination against over 8,043 million trademark applications. For Vietnam originated trademark applications individually, there are about 30% of refusal since CNIPA's 2020 annual report showed that out of 345 applications filed at CNIPA in 2020, only 254 trademarks were granted. [1] Ranked as Tier 1 by Legal 500 Asia Pacific, Bross & Partners has compiled 7 common objections when registering a trademark in China you should avoid.

1. China refuses applied-for trademarks containing Metaverse, Yuan Yuzhou, or rejects designated goods or services with respect to Metaverse, Non-fungible Token (NFT), Cryptocurrencies, Tokens, Virtual Currencies

Applied-for Trademark	Designated Goods/Services	Reason for Refusal
[IRN 1649842]	Class 42: design and development of application software for metaverse, etc.	CNIPA partially refused because services related to metaverse are not accepted according to China's classification of goods/services
[IRN 1661775]	Class 09: Training software; educational computer applications, etc. Class 41: Computer education training, etc.	CNIPA totally rejected protection as Metaverse is likely to mislead the public about the technical characteristics of goods and the content of services in respect of which the sign is used.
[IRN 1652205]	Class 09: Non-fungible tokens (NFT) or other digital tokens based on blockchain technology; computer software for managing cryptocurrency and non-fungible token (NFT), etc. Class 36: Financial exchange of virtual currencies, etc.	Services related to virtual currencies, cryptocurrency and tokens are not accepted for the purpose of trademark registration

2. China refuses trademarks applied for containing elements that misleads or deceives consumers if a sign descriptive or deceptively misdescriptive included in the mark is not relevant to the designated goods:

Applied-for Trademark

Designated Goods/Services

Reason for Refusal

[IRN 1098636]

Class 32 (among other classes): Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, etc.

CNIPA totally rejected finding that the mark containing the word “tea fusion” is likely to mislead consumers as to the goods and services because it consists exclusively of an indication that has direct reference to the function of the product.

[IRN 1459152]

Class 09 (among other classes): Apparatus for alarming and controlling smart houses and offices, etc.

CNIPA’s total refusal of protection considering that “Canada” comprised in the sign, which is identical with the State Name of Canada, shall not be used as trademark without permission of Canada government, and the five stars is likely to mislead the public as to the qualities of the goods and content of the services.

3. China refuses protection for applied-for trademarks composed of one or two letters in combination with one or two numbers in stardard font or plain form:

Applied-for Trademark	Designated Goods/Services	Reason for Refusal
[IRN 1279163]	Class 07 (among other classes): Drilling blades for drilling machines; sawing blades for sawing machines, etc.	CNIPA totally refused concluding that the mark is devoid of distinctive character to be used as a trademark in respect of the designated goods.
996 [IRN 1463673]	Class 41: Entertainment services, namely, providing podcasts in the field of trends in technology	Total refusal of protection because the sign, comprised by Latin numbers in general form, is devoid of distinctive character to be used as a trademark.
R 9 [IRN 1596799]	Class 20: Furniture; furniture fittings, not of metal	CNIPA’s total refusal of protection as the sign, comprised by on Latin character and one number in standard font, is devoid of distinctive character to be used as a trademark.

4. China refuses trademarks sought for registration designating wholesale, retail services (except wholesale and retail services of pharmaceuticals for human use, veterinary medicine, and sanitary preparations under Chinese subclass 3509)

Applied-for Trademark	Designated Goods/Services	Reason for Refusal
[ĐKQT 1475429A]	Class 35 (among other classes): Retail store services featuring personal accessories; online retail store services featuring personal accessories.	Class 35 is entirely refused since services related to retail are not accepted for the purpose of trademark registration in China
[IRN 1011917]	Class 35 (among other classes): Trading fashionable glasses, specific glasses for bad- functioned eyes, fashion clothes, fashion bags.	The whole class 35 is refused as trading service is not accepted in China
[IRN 1519823]	Class 17: Rubber. Class 35: Retail and wholesale services in the field of industrial products, namely rubber, rubber latex, etc.	All services in class 35 are rejected because services related to retail and wholesale are not accepted for the purpose of trademark registration in China.

5. China neither accepts applied-for trademarks designating “pharmaceuticals”, nor grants those designating astrology, horoscopes, divination, and spiritual counseling services

Applied-for Trademark

Designated Goods/Services

Reason for Refusal

[IRN 1479626]

Class 05 (among other classes): Pharmaceuticals; veterinary preparations; nutritional foods for animals, etc.

Although “pharmaceuticals” is classified as code 050453 under the Nice Classification, CNIPA partially rejected protection for “pharmaceuticals” but suggesting that the term needs to be clarified for human use or for veterinary use.

[IRN 1600808]

Class 45 (among other classes): Astrological services; astrology consultancy; horoscope casting; fortune-telling; spiritual consultancy, etc.

Partial refusal of protection applicable for services in class 45 related to astrology, fortune-telling and spiritual consultancy.

6. China refuses protection for applied-for trademarks containing foreign geographical name that are widely known to the Chinese public:

Applied-for Trademark	Designated Goods/Services	Reason for Refusal
	Class 32: Beer, mineral water	Chinese characters mean California – name of a State of the United States of America which is well-known to the Chinese consumers cannot be used as a trademark.
	Class 32: Beer	CNIPA totally refused protection because the main portion of the mark is Berlin - the name of the capital of Germany.
[IRN 1490187]	Class 30: Black tea [English tea]; hamburger sandwiches; pizzas; hot dog sandwiches; ices and ice creams including soft serve ice cream, etc.	CNIPA totally rejected the trademark concluding that TOKYO is a foreign geographical name well known to the public, so it is not allowed to register as a trademark.

7. Three-dimensional marks (3D trademarks) are difficultly registrable in China by reason of having functionality under one of three types: the shape derived from the nature of the goods, or the shape of goods that is necessary to achieve technical results, or the shape which provides the goods with substantial value:

Applied-for Trademark	Designated Goods/Services	Reason for Refusal
[ĐKQT 1619811]	Class 30: Candy, chocolate	CNIPA rejected and held that the three-dimensional shape of the mark is devoid of distinctive character to be used as a trademark in respect of the designated goods. Additionally, the reproduction of mark shall include at least three-view drawings of 3D trademark.
[ĐKQT 1316276]	Class 33: Arrack; brandy; wine; piquette; whisky; vodka, etc.	CNIPA’s total refusal of protection stating that the three-dimensional shape is devoid of distinctive character to be used as a trademark in respect of the designated goods
[ĐKQT 1291695]	Class 33: Tequila	Such shape mark is devoid of distinctive character with respect to the designated goods to which it applies
[ĐKQT 1324987]	Class 33: Gin	CNIPA refused and held that applicant failed to submit the method of use with respect to the three-dimensional trademark, the shape mark is devoid of distinctive character with respect to the designated goods, and the applicant should disclaim the exclusive right of 3D shape

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has much experience in registering trademarks in China and worldwide.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.

[1] See CNIPA annual report 2018 and 2020.