In the sale and promotion of goods, besides the trademark which we are familiar with in the noticeable place on the package, product catalogue and other advertising materials, have you ever noticed a special kind of trademark which becomes more and more popular? It is either a parallel (Your Vision, Our Future) or a popular slogan (ONE WORLD, ONE DREAM) or a slogan containing a well-known trademark (HAVE A BREAK, HAVE A KIT KAT) or a slogan we are very familiar with because its wide use (I’M LOVIN’IT). This is a slogan trademark.
I. What is a slogan trademark?
A slogan trademark is a slogan as well as a trademark. As a slogan, it is characterized by publicity and advertising. It is always a popular summary of the features of the good or service and it is always an expression of the owner’s objective or philosophy. Meanwhile, it is a trademark as an indicator of the source of the good or service. It’s essential function is to indicate the particular manufacturer of the good or provider of the service.
Therefore, when we file the application of slogan marks, one aspect we should consider is the features of advertising and publicity of the slogan marks. For this aspect, we should not be overly strict and rigid; otherwise a number of slogan marks would not obtain registration. From another aspect, the basic functions of the slogan as a trademark, such as if it is a common expression in the industry or if it enables consumers to recognize the source of the good or service should also be considered. Otherwise, it will be unfair and impede others’ fair use of the slogan. Hence, the examination of this kind of trademark draws more and more attention.
II. The examination guidelines of slogan trademarks
1. The relevant regulations stipulated in Chinese Trademark Law
Firstly, as is known to all, distinctiveness is the first one condition to be examined when filing a trademark application. According to the Article 11 of Chinese Trademark Law: “The following signs shall not be registered as trademarks:
(1) those only comprising generic names, designs or models of the goods in respect of which the trademarks are used;
(2) those having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademarks are used; and
(3) those lacking distinctive features.
The signs under the preceding paragraphs may be registered as trademarks where they have acquired the distinctive features through use and become readily identifiable.”
Due to the features of a slogan, it is likely to be considered having direct reference to the characteristics of the goods or service or void of distinctiveness. It is only when the slogan does not directly show the characteristics of the good or service or if it obtained distinctiveness over use and can be easily recognized, that it can be registered as a trademark.
Secondly, since a slogan is characterized by publicity and advertising, it will sometimes exaggerate or cause unhealthy influence. According to the absolute grounds for prohibition of use and registration prescribed in paragraph 7: “the signs having the nature of exaggeration and fraud in advertising goods” and paragraph 8: “the signs that are detrimental to socialist morals or customs, or having other unhealthy influences” of the Article 10 of Chinese Trademark Law, such signs cannot be registered.
Thirdly, in the filing of the slogan marks, whether it is in conflict with the prior rights also should be considered. That is, whether it is in violation of Article 28 of Chinese Trademark Law: “Where a trademark the registration of which has been applied for is not in conformity with the relevant provisions of this Law, or it is identical with or similar to the trademark of another person that has, in respect of the same or similar goods, been registered or, after examination, preliminarily approved, the Trademark Office shall refuse the application and shall not publish the said trademark.”
2. The relevant rules prescribed in the Examination Guidelines
In December of 2005, the Trademark Examination Guidelines jointly compiled and published by China Trademark Office and Trademark Review and Adjudication Board expressly prescribed the examination standards of distinctiveness of the trademarks. Among them, the following is most closely related to slogan marks:
Where a slogan or a sentence indicating the characteristics of the goods or service and unoriginal, it shall not be registered as a trademark.
For example:
①
(Once to have, no more to be pursued)
Designated goods：Cases, bags
（This sign is leading the consumers.）
②
(Let the breeding industry be full of vitality)
Designated goods：Feedstuff
（This sign implies the effect of the designated goods.）
However, if the slogans are original and unpopular or composed of other elements, which make the whole mark distinctive, they are exclusive.
For example:
①
(Don’t let it fly away lightly)
Designated goods：Tablet
②
Designated goods：Adhesives for industrial purposes
③
(Century transportation; Once to have, No more to be worried all the way)
Designated goods：Insurance
④
(“贴心还是千金” is contained in the mark which means “as thoughtful as ‘qianjin’”. “qianjin” is the owner’s trade name and it also refers to the daughter in Chinese language.)
Designated goods：Chinese medicine nostrum
3. Conditions of registration
By summarizing the relevant regulations prescribed in China Trademark Law and the Examination Guidelines, we can see that the examiner usually examines the following conditions in the substantive examination of slogan trademarks (It will be explained in details through the following examples. Among them, those with “○” indicates the examples which were approved for registration. Those with “×” indicates the examples which were refused for registration.):
(1) Whether they are distinctive and can be used to distinguish the source of goods or service
① If the slogan only describes the characteristics of the goods such as quality, raw materials, functions, source, price and consumers, it shall be refused for registration. If it is not only a direct reference to the characteristics of the goods but a metaphor or personification of the goods, it can be registered.
ד来自美丽的天山” (come from the beautiful Tianshan Mountains)（Designated goods: food, etc.）
ד补血精品” (quality products for enriching the blood)（Designated goods: nutritional food (not for medical purpose), etc.）
○“
” （Designated goods: eye patches for sleep purpose; stockings）
○“你的力量” (Your power)（Designated goods: digital cameras; personal computers, etc.）
② If the slogan is an unoriginal and popular advertising and publicity phrase well-known to the general public and is void of distinctiveness as a trademark, it shall not be registered. However, original and unpopular slogans can be registered.
ד让更多的人每天喝杯好奶” (Let more people drink a bottle of good milk every day.)（Designated goods: milk tea (main material is not milk); yoghourt, etc.）
ד科技以人为本” (People-oriented science and technology)（Designated goods: telephones, etc.）
ד让方便成为一种享受” (Make the use of toilet a enjoyment)（Designated goods: water-closets, bath fittings, etc.）
○“YOUR VISION，OUR FUTURE” （Designated goods: cameras, bath fittings, endoscope for medical purpose, etc.）
○“JUST DO IT” （Designated goods: Clothing, etc.）
○“ONE WORLD，ONE GAME，ONE BEER” （Designated goods: Beer, etc.）
○“百度一下，你就知道” (Click Baidu, You will know)（Designated goods: providing search engine for Internet, etc.）
○“
” (Avanty, you paint the dragon while I put the pupils on its eyes)（Designated goods: the rent of vending machines, etc.）
③ If a trademark is composed of slogan, sentence and other distinctive elements, even though the slogan and sentence is void of distinctiveness (fall into the scope of signs which can not be registered prescribed in the Article 11 of Chinese Trademark Law), it can be registered and protected as a whole. The indistinctive part will not be protected.
○“眼中无他，却有力加” (Nothing in the eyes but ‘LIJIA’)（Designated goods: beer, etc.）
○“来自雀巢的爱” (Love from ‘Nestle’)（Designated goods: processed water (drink); spring water (drink); mineral water (drink), etc.）
○“HAVE A BREAK, HAVE A KIT KAT” （Designated goods: sugar, candies, chocolates, cakes, etc.）
Notice: In the above examples, the slogans are in unoriginal, popular and common syntactical structures. However, they contain distinctive parts (highlighted by dots), which enables the whole mark to be distinctive and protected as a whole. Nevertheless, the registrants could not claim exclusive trademark right over the indistinctive part of the slogan or sentence that is out of the scope of protection.
④ There is a certain distinctiveness of the slogan and its distinctiveness is strengthened through use and can be used as a indicator of the source of the good or service.
○我就喜欢 (I’M LOVIN’IT)（Designated goods: sandwiches, etc.）
○
（Designated services: advertising, business research, import-export agencies）
(2) If the slogans or sentences have a nature of exaggeration and fraud in advertising goods or they are likely to cause unhealthy influence, they are prohibited from registration. However, those that do not affect others’ bona fide use nor mislead or deceive consumers can be registered.
ד金钱万能” (Money Is Everything)（Designated goods: jewelry, etc.）
○“钻石恒久远、一颗永流传” (A diamond is forever)（Designated goods: jewelry, bracelets [jewelry], etc.）
(3) Those that are not in conflict with the prior rights and not in violation of the other regulations prescribed in Chinese Trademark Law can be registered.
III. Typical cases in relation to slogan trademarks
Using the above registration conditions, let us review some typical cases in relation to slogan marks and their solutions. In the following two cases, the China Trademark Office rejected the registration of slogan marks on the grounds that they were void of distinctiveness. However, in Case No. 1, the applicant explained the real meaning of the slogan in the review procedure and in the end, obtained registration. In Case No. 2, the applicant emphasized the originality of the slogan and obtained registration. The China Trademark Office is comparatively stricter in the examination of slogan trademarks than the common word and device trademarks. However, from these typical cases, we can summarize the conditions and manners on which the slogan marks obtained registration.
1. Trademark “WHAT REALLY MATTERS IS INSIDE”
The applicant Sauer，Inc filed an application for registration with the China Trademark Office (TMO) for the pure word mark “WHAT REALLY MATTERS IS INSIDE” on designated goods: “hydraulic pump for land vehicles, etc.” in Class 12 on September 14, 2000. During examination, the TMO considered that the trademark is translated into “确实有重大关系的东西在里面 (The things of significant relevance are on the inside)” which is an advertising slogan and void of distinctiveness as a trademark. According to the Article 7 and Article 17 of the China Trademark Law before the amended released on October 27, 2001 and the (2001) Trademark Examination (2) Refusal No.3055 Trademark Refusal Notification, the TMO rejected the application and thereby the trademark could not be published.
The applicant was not satisfied with the refusal made by the TMO and appealed to the Trademark Review and Adjudication Board (TRAB). The applicant claimed that it was a serious mistranslation and that the TMO translated the applied mark into “The things of significant relevance are on the inside”. The correct translation is “内涵最重要 (The essence is most important)” which neither reflects the internal components of the designated goods nor the importance of the components. Therefore, the applicant argued that the conclusion that the applied mark is only an advertising slogan is untenable. The applied mark was also manifested in a brief sentence that is not a common structure in the trademark design and also rarely used in commerce. Therefore, consumers will be attracted and impressed by this unique design. Furthermore, the applied mark had been registered in Australia and the USA and there were precedents for which the trademark in the brief sentence obtained registration. Therefore, the applicant argued that the applied mark is not in violation of the relevant regulations of the Chinese Trademark Law and should be granted for registration.
According to the Article 30 of Trademark Review Rules, the TRAB formed the collegiate bench and examined this case according to the law. After the review by the collegiate bench, the TRAB held that the applied mark should be translated into “内涵最重要 (The essence is most important)” rather than “确实有重大关系的东西在里面 (The things of significant relevance are on the inside)”. The applied mark did not directly describe the internal components of the designated goods “hydraulic pump for land vehicles, etc.” in Class 12. Also it was not a commonly used professional term to indicate the designated goods. Considering that there was no evidence to prove that the applied mark had become a professional term or commonly used advertising slogan, the applied mark could be used to distinguish the source of goods and it is of distinctiveness as a trademark. Based on the above, the applied mark was preliminarily approved and published. According to the Article 27 and Article 32 of the existing Trademark Law, the TRAB issued the Decision on Trademark Refusal on “WHAT REALLY MATTERS IS INSIDE” (TRAB[2004]No.0634) on March 17, 2004: The applied mark “WHAT REALLY MATTERS IS INSIDE” with designated goods “hydraulic pump for land vehicles, etc.” in Class 12 to be preliminarily approved and published. This case was then transferred to the TMO for preliminary approval and publication. According to this Decision, the TMO preliminarily approved the application on May 21, 2004 and published the same on August 21, 2004 (see the Trademark No.2019224 on Trademark Gazette No.928 and No.940 respectively).
2. Trademark “MAKES PEOPLE LISTEN”
The applicant LLW of Sweden AB filed a registration application for the pure word mark “MAKES PEOPLE LISTEN” on designated goods of “sound recording apparatus, sound transmitting apparatus, etc.” in Class 9 with the TMO on June 1, 2001. Through examination, the TMO considered that the applied mark means “使人们倾听 (Makes people listen)” which is an unoriginal advertising slogan and is void of distinctiveness as a trademark. According to the Article 7 and Article 17 of the China Trademark Law before amended released on October 27, 2001 and the (2001) Trademark Examination (2) Refusal No.6572 Trademark Refusal Notification, the TMO rejected the application and thereby the trademark was not to be published.
The applicant was not satisfied with the refusal made by the TMO and appealed to the TRAB on November 20, 2001. The applicant claimed that the applied mark is short and easy to remember and recognize. The applicant also claimed the mark did not describe any of the characteristics of the designated goods. The applicant requested approval of the registration application of the applied mark.
From Article 30 of Trademark Review Rules, the TRAB formed the collegiate bench on February of 2004 and examined this case according to the law. After review by the collegiate bench, the TRAB held that though the applied mark can be translated into “使人们倾听 (Makes people listen)”, it was not only a direct reference to the function, usage and other characteristics of the designated goods “sound recording apparatus, etc.” in Class 9. There was no evidence to prove that this slogan had become a commonly used advertising slogan. Therefore, the applied mark could be used to distinguish the source of goods and it is of distinctiveness as a trademark. The applied mark was preliminarily approved and published. From Article 27 and Article 32 of the existing Trademark Law, the TRAB issued the Decision on Trademark Refusal on “MAKES PEOPLE LISTEN” (TRAB[2004]No.3365) on July 14, 2004: The applied mark “MAKES PEOPLE LISTEN” with designated goods “sound recording apparatus, sound transmitting apparatus, etc.” in Class 9 is preliminarily approved and published. This case was then transferred to the TMO for preliminary approval and publication. According to this Decision, the TMO preliminarily approved the application on September 14, 2004 and published the same on December 14, 2004 (see the Trademark No. 2023411 on Trademark Gazette No.943 and No.955 respectively).
IV．Conclusion
At present, original slogans can be protected by means of trademark right or copyright. However, it is comparatively more difficult to protect the slogans through copyright since they are usually short. There is also few precedent cases where the slogans are protected on the grounds of copyright. In practice, a number of enterprises file trademark applications for slogans to try to obtain trademark rights. Despite this, the examination guidelines towards slogan marks are not very well established and it becomes particularly important to check and improve the distinctiveness of the slogans before filing the application. In the application procedure, the examiners are not all similar in applying and understanding the examination guidelines. Even for the same slogan in different classes, the TMO approved it in some classes while rejected it in other classes. With regards to this aspect, we would like to provide the following advice for your reference:
(1) With regards to the slogans of strong distinctiveness and significance in advertising and publicity, we recommend trying to obtain protection by filing a trademark application.
(2) With regards to the slogans of certain distinctiveness, we recommend composing other more distinctive elements with the slogan and filing a trademark application for the composed mark to obtain protection.
(3) With regards to original and unpopular slogans, if they are rejected by the TMO, the applicant may appeal to the TRAB by claiming the originality of the slogan. If the slogan has been used in China, the applicant may submit the relevant use evidence to prove that the distinctiveness of the slogan is enhanced over use.
References:
1. Chinese Trademark Law
2. Trademark Examination Guidelines
3. Practical Cases in Relation to the Examination and Review of Slogan Trademarks
4. Trademark Gazette
5. http://sbcx.saic.gov.cn/trade/index.jsp
