It came as big surprise the decision issued by Beijing High Court to invalidate the trademark “MLGB” registered by Shanghai Jun Ke Trade Co., Ltd. (“上海俊客贸易有限公司” in Chinese).
The company and the brand were created by Chinese TV presenter “Li Chen” and by the singer Wilber Pan “Pan Wei Bo”. The reason of the invalidation? MLGB is the common abbreviation of an offensive expression and shall be invalidated according to art. 10.1.8 of the Chinese Trademark Law.
It all started when a group of four lawyers started an action with the Chinese Trade Mark Office in 2015, seeking the invalidation of the MLGB trademark based on the that such acronym is widely seen as a short of a vulgar Chinese expression.
In November 2016, around one year after the complaint, Trademark Review and Adjudication Board (TRAB) annulled the trademark. Jun Ke Trade Co., the company behind MLGB, responded with lawsuits challenging the decision in front of the People's Court.
The company argued that MLGB stands for“My Life Is Getting Better” rather than the offensive expression. And in facts, many products carry the full phrase.
Article 10.1.8 of Chinese Trademark Law recites as follows:
“None of the following signs may be used as trademarks: (…) (8) Those detrimental to socialist ethics or Customs, or having other ill effect”
The Beijing High Court held that "other ill effect”ruled on Article 10, Section 1, Clause 8 of Trademark Law is determined from the following four aspects:
- Whether the trademark or its components fall within “other ill effect”depends on“the public”.
- The factual status of the date of trademark application should be considered in the determination of trademark or its components with “other ill effect”.
- “Inherent meaning” of trademark or its components should be determined on the common perception of the Chinese public, that is, by dictionaries, reference books, etc.
Formal official publications or content that can be widely contacted by the public with a“credibility”information carrier, etc., and common understanding based on the public's common sense when the trademark or its components is judged for“other ill effect”.
- Those who claim the trademark has“other ill effects”shall bear the bundle of evidence.
However, there is another important element that – according to our understanding – paid an important role in the judgment.
Shanghai Jun Ke Trade Co., Ltd. also filed another trademark application (“caonima”, which unmistakably a bad word) and the court opined that the registrant has the obvious intention to cater for bad cultural tendencies, and determined the disputed trademark as offensive expression which violates“other ill effect”ruled on Article 10, Section 1, Clause 8 of Trademark Law.
Technically and literally“other ill effect”is passible of such interpretation. The Judges are pretty free to create the interpretation of this element.
Some commenters said that that the line of interpretation adopted by the Judges is the strict application of the rule under article 10. We believe that this decision is worth commenting because it is not a mistake or an isolated view of a moralist judge. It is probably in line with general view of the Beijing High Court on this issue.
Indeed, in the MLGB case, also given the large scale of network users in China and the close relationship between the network and the public life, the purpose envisaged by the Court was to actively purify the network environment and guide the youth to establish a positive and mainstream culture and values.
In the light of this and considering the fact that there were already certain groups in the network environment referring “MLGB” to the meaning with a bad influence, it should have been determined that the disputed trademark itself has a negative meaning and a low style.
Thus, we feel that it is advisable to all companies and individuals that want to make business in China and safely obtain and maintain a trademark not to play with such vulgar words and concepts.
Vulgarity (also indirectly implied) might bring to trademark invalidation!