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The Not Negligible Problems in the English Trademark Registration at Home

Source:   |  Update: 25/09/2018, 16:06 (UTC+8)  |  

Nowadays, more or less, people prefer a product with an English trademark when they are shopping. It feels like whatever a product is, the product is at a higher level with an English trademark. So more and more manufacturers choose English trademarks for their products whether the products have any connection with the elements abroad or not. It just feels proud!

However, not all the English words can be used as the trademark in our country. Please don’t register an English trademark blindly in case of any waste of labour and money. Now, KD International will tell you which English words cannot be used as the trademark:

I. The English words are the same as or similar to our country’s name or foreign countries’ names

Usually, the English words cannot be used as the trademark of which the letters combination, implication, pronunciation or outlook is the same as or similar to a country’s name.

For example, our country name’s English short name or abbreviation are “CN”, “CHN”, “P.R.C”, “CHINA”, “P.R.CHINA”, “PR OF CHINA”, so “CHINA”, “CHINAR”, “china power” and such names same as or similar to our country’s name cannot be used as the trademark. Likewise, “FRANCE”, “CANADA LIGHT” and such names same as or similar to a foreign country’s name cannot be used as the trademark, either.

However, under some special circumstances, some English letters, words or abbreviations can be used as the trademark. The main circumstances are:

1. It won’t lead the public to a misunderstanding.

For example, the English words have other specific implications and won’t mislead the public. The word “CHAIN” is similar to our country’s English name “CHINA”, but it has the specific meaning. Therefore, it can be used as the trademark.

And the English words with their letters irrelevant to the forbidden trademark names after combination will not mislead the public. Such as CRINA (no specific meaning). So they can be used as the trademark.

2. The English words should describe a thing that exists objectively, which will not mislead the public.

For example, “Chinese sturgeon” is an old kind of rare fish in our country exclusively, which is an objective reality. So the English words “Chinese sturgeon” can be used as the trademark.

3. The trademark can have the English words which are the same as or similar to our country’s English name in the case of that the whole word is the name of the newspaper, the journal, the magazine or the legal registered enterprise.

Such as “AIR CHINA”, “RENMIN UNIVERSITY of CHINA”.

4. The English name is agreed by the government of that country.

If an applicant wants to register an English trademark name which is the same as or similar to the foreign country’s name, he needs to be approved by the government of that country and submit the relevant written documents. If the applied English name of the trademark has been registered in that country, it is regarded as approved by the government of that country.

5. The trademark can have the English words which are the same as or similar to the foreign country’s English name in the case of that the whole word is the name of the enterprise and it is consistent with the name of the applicant.

For example, Deutsche Bank applies for the “DEUTSCHE BANK” trademark as the applicant and Singapore Airlines Co., Ltd applies for the “SINGAPORE AIRLINES” trademark as the applicant, they are both approved.

6. The trademark can have the country name which is independent from the other logos with obvious characters and is only used for representing the country to which the applicant belongs.

For example, in the trademark “MAESTRO ITALIANO” (as below), the trademark applicant CIELO E TERRA S.P.A. is an Italian company, its applied trademark has the word “ITALIANO” which is the name of Italy, but “ITALIANO” only represents the country to which the company belongs. Therefore, “MAESTRO ITALIANO” can be used as the trademark.

II. The English words are the same as or similar to the name of the national flag, national emblem or colors of our country or foreign countries

If the applied English trademark is the same as or similar to the name or pattern of the national flag, national emblem or colors of the foreign country, such as “UNION JACK” (British national flag), it will be determined as the same as or similar to the foreign national flag or national emblem and disapproved by the Trademark Office.

Of course, if the trademark applicant has been approved by the government of that country and he has submitted the relevant written documents, then he can use this English name as the trademark. In addition, if the trademark has been registered by the applicant in that country, it will be regarded as approved by that country and it can be registered here.

III. The English words are the same as or similar to the name of an international governmental organization

The international governmental organization refers to an organization with specific regulations which is built by the treaties or agreements among several governments of countries and regions for some specific purposes. For example: United Nations, EU, ASEAN, OAU, WTO, WIPO. Please avoid using any full name, short name or abbreviation relevant to these organization names when you apply for a trademark.

For example, the “United Nations” is an full name and its abbreviation is “UN”; the Chinese short name of “欧洲联盟” is “欧盟”, its English full name is “European Union” and the abbreviation is “EU”; the abbreviation of “World Trade Organization” is “WTO”; and the abbreviation of “Asia Pacific Economic Cooperation” is “APEC”.

However, if the trademark applicant is approved by the international governmental organization, then he can use the English name as the trademark. And he still needs to submit the relevant documents during the registration.

Moreover, if the applied English name has other specific implications or particular expressions which will not mislead the public, then it can be used as the trademark. For example, “WHO” is similar to the letters combination of “WTO” which is the English abbreviation of the World Trade Organization, but “WHO” has a specific meaning and will not mislead the public.

IV. The English words are similar to “Red Cross” or “Red Crescent”

“Red Cross” is the special symbol of the Red Cross association, and “Red Crescent” is the special symbol of the Red Crescent association. The Trademark Office will not approve the registration if the applied English trademark is the same as or similar to those symbols.

The English name such as “Red Cross” or “Red Crescent” cannot be used as the trademark.

V. The English words are ethnic discrimination

If the English words have implications that smear, depreciate or unequally treat a nation, then they are ethnic discrimination and cannot be used as the trademark.

However, the Trademark Office will consider the components and the designated products or services of a trademark when the Trademark Office determines that a trademark is ethnic discrimination or not. In other words, some English words have no discrimination originally, but they may be determined as “ethnic discrimination” if they are used in some specific way.

For example, the trademark “INDIAN” can be used on clothes or hats, but it cannot be registered as sanitary wares.

VI. The English words are harmful to socialism morality or have other bad effect

So what English word is harmful to socialism morality or having bad effect? Generally, the curse words, the abusive language, the words harmful to the national dignity and image, the words relating to terrorism, the words harmful to religions and such words are forbidden to be used as the trademark by this clause.

For example, “idiot”, “HONKY” and such abusive, discriminating words cannot be used as the trademark. And “Vladimir Putin”, “KRONE” and such words which are the same as or similar to the name of the leader of a country, a region or a political international organization or the name of the legal currency of each country cannot be used as the trademark.

VII. The English name is the name of a foreign district that is public knowing

According to the tenth clause of Trademark Law, usually, the foreign district name (including its full name, short name, English name and common Chinese translation) which is public knowing (the public knowing names of districts of other countries and regions other than our country) cannot be used as the trademark.

For example, “Olympia”, “Japan”, “Varsaw Burgrave” and such English words cannot be used as the trademark.

Exceptions:

1. The applied name contains a district name but it is applied with its full name for the trademark.

2. The trademark is combined with the public knowing foreign district name and other words, but the whole trademark has other implications and it is used in the designated product which will not mislead the public in the understanding of the place of production.

3. The district name in the trademark is independent from the other logos with obvious characters, it is only used for representing the applicant’s location.

So, not all the English words can be used for the trademark and there are lots of English words cannot be used as the trademark. If you or your company wants to register an English trademark, you would better know the standards for the English trademark completely and estimate the English trademark in advance to make the registration successful. If you cannot decide by yourself, welcome to contact KD International and we will send our senior consultants for you to help improve your success rate sharply!