When filing trademark registration applications in China, some of the applications were rejected for violating the provision of Article 10(1)(8) of the Trademark Law of the People’s Republic of China (hereinafter referred to as "the Trademark Law"), and some registered trademarks were revoked for violating this provision. Regarding the questions on “how to understand this provision and how to apply it in specific cases”, the author sorted out some information from the practical perspective for the applicants' reference.
Ⅰ．Legal Provisions on “unhealthy influences”
Article 10(1) (8) of the Trademark Law stipulates that "Those detrimental to socialist morals or customs, or having other unhealthy influences” shall not be used as trademarks.
In the above provision, “detrimental to socialist morals or customs “and "having other unhealthy influences" are juxtaposed, and the former is one kind of “unhealthy influences ", so the "unhealthy influences" in subsequent discussions includes both the former and the latter.
The Trademark Office mainly use the "Standards for Trademark Examination and Trial" (hereinafter referred to as the "Standards") when trying trademark cases related to "unhealthy influences". The Standards explain the provision of Article 10(1)(8) of the Trademark Law as follows: “socialist morals or customs" refers to the norms for people to live together and behave together in China, as well as the good atmosphere and habits prevailing in the society within a certain period of time; "Other unhealthy influences" refer to the negative effects of the words, graphics or other constituent elements of trademarks on China's political, economic, cultural, religious, ethnic and other social public interests and public order.
The interpretation of "other unhealthy influences" in Article 5 of the Provisions of the Supreme Court on Several Issues Concerning the Trial of Administrative Cases of Trademark Authorization and Confirmation (hereinafter referred to as the Provisions) is basically consistent with the contents of the Standards, that is, if a mark or its constituent elements may have a negative impact on the public interests and public order of China, the court may determine that it belongs to the "other unhealthy influences" situation stipulated Article 10(1)(8) of the Trademark Law. The application for registration of the names of public figures in political, economic, cultural, religious, ethnic and other fields as trademarks belongs to the "other unhealthy influences". The "Provisions" provide a legal basis for courts to hear trademark cases related to "unhealthy influences".
The legislative purpose stipulated in Article 10(1) (8) of the Trademark Law is to safeguard the public interests and public order. If a mark falls under the circumstances stipulated in this provision, it cannot be used as a trademark, and of course it cannot be registered as a trademark, including on grounds of trademark use.
Ⅱ．Criteria for judging "unhealthy influences
The Trademark Law does not further stipulate how to judge "unhealthy influences" as prescribed in Article 10(1) (8). According to the Standards, social background, political background, historical background, cultural tradition, ethnic customs, religious policies and other factors should be considered in judging “unhealthy influences”, and the composition of trademarks and the goods and services designated for use should also be considered. In the Standards, the following types of marks are considered to be “detrimental to socialist morals or customs, or having other unhealthy influences ":
The list in the Standard can not cover all situations of real-world trademark applications, and the "Provisions" does not provide further details or clear technical regulations on how to judge "unhealthy influences". Therefore, in practice, the Trademark Office sometimes made different decisions on the same type of cases, and the courts made inconsistent judgments. Scholars and practitioners have also been controversial about the understanding and application of this provision. With the gradual increase of cases and the continuous summarization in the trial process of authorization and confirmation of trademark rights, the court try to refine the judgment criteria on whether a mark is "harmful to socialist morals or customs or has other unhealthy influences".
In the judgment (2018) JING XING ZHONG No. 137, the Beijing Higher Court held that: "other unhealthy influences" stipulated in Article 10(1) (8) of the Trademark Law defines one of the absolute situations in which signs are prohibited from being used as trademarks. The scope of determination on “other unhealthy influences” should avoid improperly expanding, limiting the space for free expression and creativity of operators in commercial activities, and should also avoid unduly narrowing, resulting in the registration of signs that may have negative influences on China's political, economic, cultural, religious, ethnic and other social public interests and public order. The determination on whether the trademark mark or its constituent elements have “other unhealthy influences" should be comprehensively judged from the following four aspects:
1. The subject of "other unhealthy influences"
From the perspective of protecting "public order and good customs, Article 10(1)(8) stipulates the absolute situation that signs which may harm social public interests and public order are prohibited from being used as trademarks. So the main body of judgment on this issue should be the “whole public”, rather than the "relevant public" of the designated goods or services of the trademark. Otherwise, the judgment conclusion is easy to be "partial", which is not conducive to the protection of social public interests and public order.
2. The time of "other unhealthy influences"
Generally, the factual status of the trademark at the time of filing shall prevail. If the trademark does not have “other unhealthy influences” at the time of filing, but has "other unhealthy influences" at the time of registration, in order to avoid possible negative effects on China's political, economic, cultural, religious, ethnic and other social public interests and public order, it should also be determined that the trademark constitutes the situation of "other unhealthy influences".
In addition, the institutional differences between trademark authorization and confirmation procedures should be noted. In trademark confirmation cases, even if a trademark is given other meanings after its registration date due to the change in the public’s habits and ways of using words, from the perspective of protecting the reliance interests of trademark owners, it is generally inappropriate to use the factual status after registration as the basis for evaluating whether the trademark has "other unhealthy influences" unless maintaining the registered mark will obviously violate public order and morals. The relationship between private rights and public interests shall be properly balanced.
3. The standards of "other unhealthy influences".
Generally, it should be judged according to "inherent meaning" of the trademark. In particular, the meaning of mark composed of individual letters or combination of letters should be determined in accordance with the general cognitive of the public in China, i.e., the contents of official publications such as dictionaries, reference books or creditable information carriers that are widely accessible to the public. Or, if the public in China has formed a general cognitive on the meaning of the mark based on common sense of life, it can also be determined with sufficient explanation.
It should be avoided that a trademark is deemed to have "other unhealthy influences by loading it with non-ordinary meanings formed by deduction and association in special contexts and situations. Otherwise, it will inevitably result in undue restriction of the space for free expression and creativity in commercial activities, and is not conducive to the positive guidance of China’s socialist moral culture.
If there are differences in understanding the meaning of the trademark, in order to draw a conclusion that is more in line with the general cognitive of the public, a "high probability" inner confirmation on whether the use of the trademark may have a negative impact on the public interests and public order could be made by referring to factors like the applicant’s profile, the way of using the mark, and the designated goods or services, etc.
4. Burden of proof of "other unhealthy influences".
Generally, the party claiming that the trademark has "other unhealthy influences" shall bear the burden of proof. If the party claims the inherent meaning of the trademark, it shall submit dictionaries, reference books, etc. to prove it. If the meaning of the trademark is based on common sense of life and can be generally recognized, it can also be accepted with sufficient explanation.
Referring to the above judgment criteria, the author believes that most trademark authorization and confirmation cases can get relatively clear decisions/judgments. The following are several cases applying for these criteria.
Ⅲ．Case and Comment
1. Trademark "THE WALKING DEAD"
Application No.: G1213064
Filing Date: August 21, 2014
Judgment: (2018) Zui Gao Fa Xing Shen No.677
The Trademark Office rejected the application on the ground that the mark constituted a situation under Article 10(1) (8).
The Trademark Review and Adjudication Board(TRAB) held that the trademark "THE WALKING DEAD" can be translated into "行尸走肉" in Chinese, its overall style is not high, and is easy to have unhealthy influences when used on the designated goods and services.
The court of first instance held that: The examination of whether the trademark has unhealthy influences should be based on the meaning of the mark itself, the designated goods and services, and the understanding of the overall meaning of the mark by the relevant public in China. The Chinese meaning of "THE WALKING DEAD" does not contain violent and obscene meanings, thus it has no unhealthy influence. The TRAB did not explain or provide evidences to prove that the relevant public will uniquely associate the trademark with "行尸走肉". In the real market activities, the trademark has performed well on movies and games, and there is no evidence that the mark has brought unhealthy influences to political, cultural or other public interests. Therefore, this trademark does not violate the provision of Article 10(1) (8).
The court of second instance held that: Article 10(1) (8) of the Trademark Law stipulates the absolute situation that signs are prohibited from being used as trademarks to protect public order and good customs, so the judgment subject here should be the “whole public”, not the "relevant public". The first instance judgment limited the subject to "relevant public", which is wrong. "Dead" in the mark means the end of life, using it as an integral part of the trademark is obviously inconsistent with the tradition of promoting "truth, goodness and beauty" in Chinese culture, and may have a negative impact, so it is not suitable to be used in a trademark. Although the applicant submitted relevant evidences to prove that the Chinese name of "THE WALKING DEAD" series of cartoons and film and television works is "行尸走肉" and has been published or broadcast with the permission of the relevant state departments, the correspondence between the Chinese and English names is only recognized by the public who know the relevant works, and is not enough to prove that it is well known to the whole public in China. In addition, even if the Chinese name for "THE WALKING DEAD" is identified as "行尸走肉", its use as a trademark is contrary to the intention of encouraging the public to be "hardworking and positive" in socialist culture, and may also have "unhealthy influences".
In the retrial, the Supreme Court agreed that the application for the trademark constituted the situation stipulated in Article 10(1) (8) of the Trademark Law, and upheld the judgment of the court of second instance.
The main body to judge whether a trademark has "other unhealthy influences" should be "the whole public" rather than "the relevant public" of the designated goods/services. In addition, the permission of the relevant state departments to publish and release comics, movies and other works is based on the content of works, and has nothing to do with the trademark registration.
2. Trademarks "Huoshenshan", "Leishenshan", "Li Wenliang" and "Whistleblower"
At the beginning of 2020, in order to crack down on malicious trademark registration applications related to the epidemic, the Trademark Office, according to Article 10(1) (8) of the Trademark Law, rejected the first batch of 63 trademarks such as "Huoshenshan" and "Leishenshan" that entered the substantive examination stage, and indicated that other trademark applications related to the epidemic would be controlled and rejected after they enter the substantive examination stage.
"Huoshenshan Hospital" and "Leishenshan Hospital" are newly established hospitals in Wuhan in January 2020 to treat novel coronavirus pneumonia patients centrally. Dr. "Li Wenliang" was one of the first doctors in Wuhan to issue an early warning of coronavirus, and was called the "whistleblower" by the media. With the development of COVID-19 pandemic and the increasing concern and discussion of the whole society, signs related to the epidemic, including personnel names, virus names, drug names, protective product names, etc., have been related to public order and public interests, and should no longer be used and registered as trademarks, otherwise it is easy to cause unhealthy influences, so all such trademark applications will be rejected. However, before COVID-19 pandemic occurred, the word "whistleblower" had been successfully registered as trademarks as it was a neutral word in its inherent meaning and had no unhealthy influences. These previously registered "whistleblower" trademarks have nothing to do with the epidemic, so they should be maintained to protect the reliance interests of trademark owners and reasonably balance the relationship between private rights and public interests.
3. Trademark "DETECTIVE CHINA TOWN"
Application No.: 18557531.
Filing Date: 9 December 2015
Judgment: (2019) Jing Xing Zhong No.9547
The TRAB believed that "China Town" belongs to public resources, so the trademark is an improper occupation of public resources and is easy to have unhealthy influences.
The court of first instance held that the trademark as a whole and its constituent elements did not have a negative impact on the public interest and public order of China, and the trademark application did not violate the provision of Article 10 (1) (8) of the Trademark Law.
The court of second instance held the same view with that of the court of first instance and upheld the first-instance judgment.
In respect of the inherent meaning of the trademark itself, DETECTIVE CHINA TOWN is a neutral word. Its use as a trademark has no negative impact on the public interest and order of the society, so the provisions on "unhealthy influence" are not applicable.
4. Trademark "THE SPECIAL ARMS and logo"
Application No.: 11591139
Filing Date: 11 October 2012
Registration Date: July 21, 2015
Goods (Class: 32): beer; water (beverage); Non alcoholic beverages…
Judgment: (2020) Jing Xing Zhong No.7015
After the trademark was registered, an invalidation request against it was filed by others. The TRAB held that the mark was easy to have unhealthy influences and should be declared invalid. The registrant refused to accept the decision and filed a lawsuit with the Beijing Intellectual Property Court.
Beijing Intellectual Property Court held: The trademark consists of Chinese characters for "The special Arms", English "THE SPECIAL ARMS" and the background of soldier silhouette. Among them, the Chinese characters are a distinctive part of the mark. The term "The special Arms" is usually understood as a type of soldier carrying out special tasks, and its use on beer, water (beverages), non-alcoholic beverages and other commodities will easily make the public associate the above commodities with military materials, which may have unhealthy influences on China's political, military and other public interests and public order. Although the plaintiff submitted evidences of advertising, sales, etc. to prove that the trademark had been used for a long time and it had no unhealthy influences, the fame and reputation of the mark through use shall not be considered as "other unhealthy influences" is to judge whether the trademark or its constituent elements have unhealthy influences. The trademark constitutes the situation referred to in Article 10(1) (8) of the Trademark Law.
The Beijing Higher Court decided that the trademark had unhealthy influences and upheld the first-instance judgment.
"Other unhealthy influences" is only to judge the trademark or its constituent elements themselves. Whether the trademark is well-known after use is not a factor to be considered.
5、 Trademark: "乔丹and logo"
Application No.: 6020578
Filing Date: 26 April 2007
Registration Date: April 21, 2010
Goods(Class:25): Clothing; Swimming suit; Shoes; Climbing shoes; Cap; Socks…
Judgment: (2017) Zui Gao Fa Xing Shen No.4851
The TRAB, the courts of first and second instance all held that the trademark itself did not have any negative impact on China's political, economic, cultural, religious, ethnic and other public interests and public order, and did not constitute "unhealthy influences".
The Supreme Court also decided that the trademark had no unhealthy influences and upheld the second-instance judgment.
The Supreme Court pointed out in the judgment: For the names of public figures in the political, economic, cultural, religious, ethnic and other fields, if the registration of it as trademark may have negative effects on the public interests and public order of China, it can be determined that the mark has "other unhealthy influences" stipulated in Article 10(1) (8) of the Trademark Law. However, if the registration of another person's name as a trademark only damages specific civil rights and interests and does not have negative impacts on public interests and public order, it is not appropriate to apply for the provision of Article 10(1) (8) because the Trademark Law has stipulated other relief methods and corresponding procedures for “specific civil rights”.
Article 10(1) (8) of the Trademark Law is to protect the public interests and public order, not specific civil rights and interests. The trademark involved in the case only damages the prior name right of famous basketball player Jordan, and does not involve public interests and public order. The prior right holder should protect his rights according to other relief provisions of the Trademark Law (Article 31). Article 10(1) (8) is not applicable in this case.
The current laws and regulations have not been detailed enough in the judgment criteria and application of “unhealthy influences" of trademarks. The Trademark Office and courts at all levels are committed to forming more stable and unified standards through specific case trials, but their decisions and judgments can only be used as references and cannot become a legal basis. Therefore, in the face of more complicated cases in practice, disagreements or even conflicting opinions may still exist among the parties. Both the Trademark Office and the courts should, in addition to refer to the judgment criteria mentioned above, also take into account the specific circumstances of each case, the national conditions, history, social concepts, market effects and other realities of China, and take the general consumers' cognition of the trademark as the main standard to make a comprehensive judgment.
Before applying for a trademark, the applicants, especially foreign applicants who are not familiar with Chinese society, national conditions and market are advised to make a detailed search and understanding of the meaning of the trademark in China, and to avoid words or designs that are contrary to the "public order and good customs" of Chinese society. On the other hand, if a trademark is rejected under Article 10(1) (8) of the Trademark Law, the applicant should not give up easily, it should actively use various relief procedures granted by law, and strive for legitimate trademark rights and interests through review and court trials at all levels.