Introduction
Trademark route
Copyright route
Anti-unfair Competition Law route
Comment
A "tagline" is a catchy quip, used in advertising, that helps customers to identify a brand and its marketing message. Slogans and taglines tend to be used interchangeably, but their purposes may be far more nuanced. Slogans, which convey a brand's value and promises about the company's growth and evolution, can last longer than taglines, which leverage the power of succinctness. Naturally, businesses want to protect their innovative creations and prohibit others from using their taglines. In China, a tagline may be protected as a trademark, copyrighted literary work or a business sign (as provided in the Anti-unfair Competition Law).
China follows the first-to-file principle with regard to trademark registration. It is therefore advisable to register taglines as trademarks as early as possible.
When assessing the registrability of a tagline as trademark, brand owners should refer to the new Guidelines for Trademark Examination and Adjudication issued by the China National Intellectual Property Administration (CNIPA) on 16 November 2021, and the Guidelines for the Adjudication of Cases Involving Granting and Affirmation of Trademark Right promulgated by the Beijing High Court (which has jurisdiction over trademark administrative appeals) in 2019.
Section 2.3, Chapter 4 of the CNIPA Guidelines enumerates the circumstances in which a sign can be deemed devoid of distinctiveness:
The usual scenarios where a sign could be deemed as one of 'other signs that are devoid of distinctive features' mainly include the following . . . (2) those phrases or sentences indicating the characteristics of goods or services, or ordinary advertising or promotional terms. In general, the said sentences or phrases are not likely to be perceived by the relevant consumers as a source identifier of goods or services, thus is devoid of the distinctive features of a trademark.
Article 9.6 of the Beijing High Court Guidelines explicitly provides that:
If a contentious trademark is merely composed of advertising or promotional terms, it generally falls under the circumstances as provided in Article 11.1.3 (signs that are otherwise devoid of distinctiveness shall not be registered as trademarks) of the Trademark Law.
In other words, advertising text that merely describes the features of goods or services is deemed inherently indistinctive and unregistrable. Therefore, slogans that are not intrinsically distinctive would be denied trademark registration in China, regardless of whether they have functioned as a source identifier of goods or services. For instance, the CNIPA and the courts rejected the following trademark applications on the grounds of lack of distinctiveness:
- HOTELS THAT DEFINE THE DESTINATION (designating a hotel service); and
- LET'S PUT SMART TO WORK (designating education, training and computer programming services).
The phrasing "advertising or promotional terms" is quite ambiguous, given that both sets of guidelines lack an explicit definition or interpretation. Brand owners seeking to register a tagline need to substantiate its registrability by proving its inherent distinctiveness, or acquired secondary meaning through use. Successful registration cases include:
- Nike's tagline "Just do it";
- the Chinese equivalent of McDonald's tagline "I'm lovin' it"; and
- the Chinese equivalent of Tiffany's tagline "Believe in love".
To invoke copyright in China, taglines must have a certain degree of originality and creativity, the assessment of which is subjective.
Some taglines are recognised as original and are granted protection by the courts, such as:
- the Chinese equivalent of the paint brand Nippon's tagline "Nippon paints make everywhere shinning"; and
- the medical cosmetology brand Yestar's tagline "Go to Yestar, you are the star".
Taglines that lack sufficient originality or consist of common expressions are less likely to be deemed copyrightable in practice. For example, the courts found that the following Chinese taglines merely combined general expressions, words and phrases:
- "Yuexing furniture is the home in my heart";
- "wine for the state banquet";
- "satisfy all office needs"; and
- "share the storm, share the sunshine".
According to China's Copyright Law, authors who are from China or member countries of the Berne Convention for the Protection of Literary and Artistic Works automatically acquire the copyright to a copyrightable work as soon as it comes into being. Copyright owners may record their works with the China Copyright Protection Centre and obtain a copyright recordal certificate, which could serve as prima facie evidence of ownership. This process is not a prerequisite to invoke copyright protection. Should the copyright owner decide to bring an infringement action, they will need a lot more evidence to corroborate their ownership of the copyrighted tagline. Evidence for the creation and publication of taglines – including, but not limited to, email correspondence, contract or transaction records – substantiating the identity of the creator and the dates of creation and publication of the copyrighted tagline should be furnished.
Anti-unfair Competition Law route
Where a tagline fails both the distinctiveness and creativity test, and thus cannot be registered as a trademark or protected as a copyrighted literary work, rights holders can still resort to the Anti-unfair Competition Law, on the premise that the tagline could be deemed a business sign with a certain degree of influence that enables consumers to associate the sign with its owner.
In 2019, Tian Yan Cha (TYC), a Chinese business intelligence search service provider, lodged an unfair competition suit against its major rival Qi Cha Cha (QCC) for the latter's misuse of its famous tagline "searching for companies, searching for bosses, searching for [business] relations". QCC argued that the tagline was a simple description of both companies' services and should not be exclusively used by TYC. Siding with the plaintiff, the first-instance court reasoned that the tagline should be protected as a business sign with market influence under the Anti-unfair Competition Law, mainly because it had originally been created by TYC and had acquired secondary meaning after extensive use.
The threshold to register taglines as trademarks may be high in China, but it is definitely worth the trouble because the country's trademark regime offers exclusive, nationwide and uninterrupted protection over taglines, providing that the registration is not invalidated or cancelled due to genericide or non-use. In contrast, China's copyright regime provides protection over a limited timespan (usually the lifetime of the author and 50 years after their death), while the Anti-unfair Competition Law, which promotes fair competition at the core of its legislative spirit, offers non-exclusive protection to rights holders.
For further information on this topic please contact Yongming Fan at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.
An earlier version of this article was first published by IAM.