1. Legal provisions

The distinctive features of a trademark, also called “the distinctiveness of a trademark”, refers to the features that a trademark should have to enable the relevant public to distinguish the origin of goods or services. In other words, a trademark shall make consumers identify, remember, and can play the function and role of indicating the origin of goods or services.

The distinctive feature is an important requirement for a trademark to be registered. According to Article 11 of Chinese Trademark Law, if a sign lacks distinctive features, it will not be able to be registered. The circumstances of lacking distinctiveness include:

(1)signs only have the common names, graphics, models of the goods;

Example: sign "Phone" used on goods "Mobile Phone", sign "XXL" used on goods "clothing".

(2)signs only directly indicate the quality, main raw materials, functions, intended purposes, weight, quantity or other characteristics of the goods;

Example: sign "50kg" used on goods "rice"; sign "24hours"used on goods "Bank".

(3)Other circumstances lacking distinctive features; 

Including: Overly simple or too complex words, graphics, letters or numbers, etc.; phrases or sentences indicating the characteristics of goods or services, or ordinary advertising phrases; daily business places, terms or signs, organizational forms of enterprises, industry names or abbreviations; only the full name of the applicant (except natural persons); common holiday names, holiday greetings, popular words on the internet, internet memes, common symbols, etc. 

Example: A”，“□”,“Mall”, “GUESS HOW MUCH I LOVE YOU”,“Inc.”, “Happy New Year”, “ ” etc.

Article 11.2 of the Trademark Law provides for exceptions, that is, the mark listed in the preceding paragraph may be registered as trademark if they have obtained distinctive features through use and are easily identifiable. Therefore, the distinctiveness necessary for trademark registration can be obtained in two ways: inherent distinctiveness and distinctiveness through use. Inherent distinctiveness is inherent in the trademark itself, while distinctiveness through use is obtained by the trademark itself through continuous practical use. This article will focus on discussing trademarks that have obtained distinctive features through use.

2. Determination on" distinctive features through use"

According to the Guidelines for the Examination and Trial of Trademarks, to determine whether a trademark has distinctive features, in addition to considering the meaning, calling and appearance of the trademark itself, the following points should be considered in combination:

(1) Awareness of the sign by relevant public;

(2) The actual time of use, the manner of use, the use in the same industry of the mark on the designated goods or services;

(3) The sales volume, turnover and market share of the goods or services using the mark;

(4) Advertising and its coverage for the goods or services using the mark;

(5) Other factors that make the mark obtain distinctive features. 

To determine whether a mark has obtained distinctive features through use, awareness of relevant public shall prevail. If the party claims that the sign has obtained distinctive features through use, it shall submit evidential materials to prove it. The evidential materials shall show the mark symbol, goods or services, the date of use and the user of the mark.

The application for registration of a mark that has obtained distinctive features through use shall be basically consistent with the mark actually used, without changing the distinctive features of the mark, and should be limited to the goods or services of actual use. If the mark is used together with other marks, the distinctive features of the mark shall be distinguished from those of other marks, and a judgment as to whether the mark itself has obtained distinctive features after use shall be made.

To determine whether a mark has obtained distinctive features through use, the factual status at the time of trial shall prevail for cases of review on refusal and review on opposition. For invalidation cases, the factual status of the disputed trademark at the time of application for registration shall prevail in principle, and the factual status at the time of trial shall be used as reference.

3. Case analysis 

<Case 1>

The following two cases illustrate the trial on “distinctiveness through use” for trademarks.

 Trademark Registration No.：G1221382

Trademark:

(3D, color claimed, words: “j'adore”)

Designated Goods: Perfume; cosmetics for nails and nail care; fragrance lotions and oils for the body; soaps; etc

Case No.: (2018) ZGFXZ No. 26, Supreme People’s Court

Key points of Trial: The applied trademark is easy to be identified as a common container, and it as a trademark lacks the distinctiveness for goods of class 3, but the applicant submitted a large number of evidence materials during the trial, including: sales agreements, invoices and delivery lists; customs declaration forms and tax payment certificates; advertisements in well-known magazines/pictorials; advertisement spending list and advertisement information, advertisement orders and invoices; search reports, Literature and news media reports issued by the National Library with the Special Seal of the National Library Science and Technology Innovation Center; sales ranking tables; honors received, etc., which can prove that since “j'adore” perfume entered the Chinese market, the applicant has widely publicized and vigorously promoted the applied trademark, which made the applied trademark achieve a certain reputation on goods of perfume and form a unique corresponding relationship with the applicant. The applied trademark has obtained distinctiveness with identifying significance through use on “perfume” goods, and can play the role of distinguishing the origin of goods. However, the evidences are not sufficient to prove that the mark’s distinctiveness through use on other designated goods except “perfume”. Therefore, the applied trademark cannot be registered on the remaining goods except “perfume”. 

Comments: The popularity and identification of the trademark can only be applied to the goods or services actually using the mark. In this case, the use evidences provided by the applicant only focuses on "perfume" goods, not "soap" and other goods. Therefore, the applied trademark has not obtained distinctiveness through use on other goods and cannot be registered. In order to effectively prove the use of a trademark, the evidence must clearly show accurate information regarding the trademark symbol, goods or services, the user, and the date of use, etc.

<Case 2>

Trademark Registration No.: 20426843

Trademark: (English translation: Small Pot Tea) 

Designated goods: Tea; Flowers or leaves used as substitutes for tea; Tea beverage; Iced Tea

Case No.: (2020) JXC No. 18054, Beijing IP Court

Key points of trial: "Tea" is the abbreviation of “tea-leaves”. "Small pot" usually refers to the packaging of products. "Small pot tea" literally means tea packaged in small cans, so it directly indicates the main raw materials, packaging characteristics of the product, lacking the inherent distinctiveness of trademark. It should not be registered as a trademark in accordance with the Article 11.1(2) of the Trademark Law. However, the evidences submitted by the registrant in this case, including distribution contracts and invoices, honors received, advertising contracts, media reports, market research reports, advertising audit reports and many civil judgments, etc., can prove that the disputed trademark has obtained high reputation among the relevant public at the time of registration, has formed a corresponding relationship with the registrant and obtained the required distinctiveness for a registrable trademark though use, and can play a role in distinguishing the source of the goods. Therefore, the disputed trademark complies with the provisions of Article 11(2) of the Trademark Law on“distinctive features through use and easily identifiable” and can be registered. 

Comments: The trademark registrant has been using the trademark since 2015, filed an application for trademark registration in 2016, and got the registration in 2017.An invalidation request against it was submitted later by others based on the grounds of lacking distinctiveness, and the registration was finally maintained after the case was heard by the Beijing Intellectual Property Court in 2021. During continuous use from 2015 to 2021, the distinctiveness of the trademark is a process of dynamic change and continuous enhancement. When judging whether the trademark achieved distinctiveness through use, the hearing authority is no longer limited to the status of the trademark at the time of application and registration in 2016 and 2017, but takes into account the actual status of the case at the time of hearing the case, which better safeguarded the legitimate rights and interests of the registrant, and saved administrative and judicial resources.

4. Summary

In cases involving the proof of "trademark distinctiveness through use", the requirements for the time, scope, and intensity of the use of the trademark are relatively high, and the applicant usually needs to spend a lot of manpower and resources, and go through several procedures such as rejection, opposition, invalidation and litigation to succeed. The applicants are recommended to know the requirements and risks before filing. If the registration is indeed required, the applicant may consider adding other elements with distinctive features to the trademark. When the other elements or the trademark as a whole can play a role in distinguishing the origin of goods or services, the trademark will be registered.