Introduction: Even though the rejection risks is slight high to register the foreign geographical names whole or the partial as trademarks, such geographical names can grant an significant scenery to trademarks, especially until now there are a lot of applicants have obtained the trademark right in relevant geographical names; therefore the trademarks applied in China in foreign geographical names are not in the minority. What is the standard to determine foreign geographical names well-known to the public in China? This article mainly tries to summarize the review rule about geographical names through arrangement of the some current typical trademark application cases in foreign geographical names.

■The basis of law and review

According to the stipulations of Article X, Item 2, the geographical names as the administrative divisions at or above the county level and the foreign geographical names well-known to the public shall not be used as trademarks, but those geographical names having otherwise meanings or serving as component part of a collective mark or certification mark shall be exclusive. Where a trademark using any of the above-mentioned geographical names has been approved and registered, it shall continue to be valid.
Trademark Review Standard illustrates that the foreign geographical names well-known to the public in Article X, Item 2 of China Trademark Law refers to the geographical names which not includes the e geographical names well-known to the public in China. The said geographical names can be used in the whole name, short title, foreign name and general translated Chinese name. Where the trademark is constituted with well-known foreign geographical names in whole or partial shall be seemed as same with the foreign geographical names well-known to the public. Where the geographical names referred to in the said Item have other meanings which refer to the geographical names as vocabulary with certain meanings and the meaning is more prominent than the geographical names, which will not mislead the relevant costumers.

■Failure Case
Situation 1: The review on the trademarks which only includes foreign geographical names or similar with the foreign geographical names

 

 

 

 

 Application No.  

Trademark

 

 Key Words on Written Judgment

 
 

1

 

  

 

5705649

 

  

 

 

DETROIT

 

  

“DETROIT”, located at the capital of Michigan, the United States, which is famous for the name of “Automobile City”; The applicant state that the trademark has had a high reputation and has already obtained the second meaning by using, but no evidence was submitted.

 
 

 

2

 

  

 

5782202

 

  

 

 

HAVANNA

 

 The application trademark and Cuba
Application for the trademark and the Cuban capital only have the difference of one letter “N”, based on the history and other related factors, the Chinese public are familiar to HAVANA

Situation II: Review on the trademarks constituted by foreign geographical names and other trademarks without prominence elements

801

Situation III: Review on the trademarks constituted by foreign geographical names and other trademarks with certain prominence elements

802

■Successful cases
Situation I: The geographical names has other meanings

 

 

 

 

 

  

 

Application No.

 

  

 

Trademark

 

  

 

Key Words on Written Judgment

 
 

 

1

 

  

 

6565593

 

  

 

HAMPTON MANOR

 

 “HAMPTON “is commonly used in English surname illustrated in dictionary; a number of countries in the world dozens of cities and towns are named as ” HAMPTON “or” HAMPTON “, it does not point to the only one public place, and no one or several of these sites also have higher awareness; in terms of the relevant public in China, the meaning of “HAMPTON” as a surname significantly stronger than the meaning of it as a place name.
 

 

2

 

  

 

5057673

 

  

 

乔治亚太平洋

 

 was translated as “Georgia” and “Georgia”;But as a English name “Georgia” usually translated as“乔治亚”, and as a place of “Georgia”, usually translated as “Georgia”;Therefore, “Georgia” does not necessarily correspond to the state as the United States “Georgia”, or “Georgia” even if the meaning of the state has said the United States, its meaning exclusively also has other meaning of the name; “Pacific” is widely known in China the relevant public specific sea name and also have significance in the application for the trademark, can be used as a marker to identify the sources of.

Situation II: the translated foreign geographical names in Chinese are well-known to China Public as well as the foreign geographical names enjoys a few reputation

 

 

 

 

  

 

Application No.

 

  

 

Trademark

 

  

 

Key Words on Written Judgment

 
 

 

1

 

  

 

G980884

 

  

 

ZURICH HELPPOINT

 

 “ZURICH” in Chinese means “苏黎世”, the  largest city in Switzerland’s. Consideration should be given to the Chinese public is aware of foreign language foreign name or Chinese translation of foreign place names. Although foreign place names “ZURICH”with a lower reputation while the corresponding Chinese translation of “苏黎世” well-known to the Chinese public, in the foreign language expression for the Chinese public does not have a high cognition; in addition to, In the application for trademark foreign places “ZURICH” also contains other part of the component.
 

 

2

 

  

 

5645357

 

  

803

 

 The “SHIMIZU,” In the english-chinese dictionary means “water” and the meaning point to a geographical names, Qingshui, Japan; Because of geopolitical factors and the difference of language, the cognition of the public generally difficult in China  seem “SHIMIZU,” as Qingshui of Japan. The existing evidence is not enough to prove that the “water city” as a geographical names well-known to the public.
 

 

3

 

  

 

4585357

 

 804

 

 

 Part of the review;”NARA” is the English name of NARA, Japan, “NARA” for our country the public, it can be regarded as the public knows foreign places, but because of cultural relations, China’s general public cognition is the Chinese character “奈良”, usually less contact with the name “NARA”, makes it difficult to the cognition of “NARA” direct “NARA”

Situation III:  foreign geographical names in Chinese are well-known to China Public are included as well as the whole trademark enjoys prominence

805

■Analysis and summary of the review and regulations of the foreign geographical names

 

 

1

 

  

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

The recognized Standard for foreign geographical names well-known to the public

 

 On this point, there is no objective of social public database, basically by the competent authority of the judges with professionalism, knowledge and experience to judge.

I think, first of all, according to the interpretation of the “modern Chinese dictionary”, the definition of the public is most people in society, unknown to the public judgment should consider the audience scope, degree and the language environment and other factors. And Chinese is the Chinese language environment, so should take most of our country has a general cognitive level of the crowd for the judgment, rather than a high level language and familiar with foreign geographical population. For Chinese translation for the Chinese public known, but in the foreign language expression for the Chinese public does not have a high degree of cognitive, limit may be extended appropriately, at the same time, combined with the application for trademark in addition to foreign places the other part of the whole whether has a significant comprehensive judgment. Above part of the case also support the view of the author.

Secondly, in the judgment whether to widely known by the public in China, in addition to consider the popularity of foreign places itself outside, combine historical reasons and humanistic factors synthetically judgment. With China has a deep political, cultural and historical origin of the contact state do relatively strict censorship of place names. As above mentioned “HAVANNAA”, “kamakura”  case.
 

 

2

 

  

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

The recognized standard having second meanings

 

 1.The geographical names as the vocabulary has a certain meaning and the meaning is stronger than as the meaning of geographical names, not to mislead the public;
2.
Such as foreign geographical names at the same time as the last name and widely used; geographical names was not pointed as a specially region alone, and the corresponding places no one has the higher visibility widely known by the public.3. Through using access to the second meaning;In this case, the name of goodwill is actually a specific production operators have created; foreign geographical names have a direct relationship between the specific commodities and producers. If you want to apply for the trademark applicant in this article, the most important is the use of powerful evidence, such as advertising costs, the breadth and scope time, sales and consumer cognition, etc.
 

 

3

 

  

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Other factors

 

 1. The trademarks constituted by foreign geographical names or the combination of other elements

If the trademark with the addition of other elements and on the whole has significant characteristics, meaning and no longer has a place name or place name as the main meaning, or as a whole has other meanings and use in its designated commodities will not make public goods origin of mistakes, not because of its containing foreign geographical names and decided that it belongs to the public shall not be registered trademark.

2. The application situations for he foreign applicant in his native land or other countries

Although the trademark has regional, but a lot of countries in the world registered the fact that at least can prove that the international point of convergence in this particular problem, has a certain reference value

3. The connection degree of trademark and commodity
If the name and the characteristics of goods and services and there is no direct contact, topographic trademarks were not indicating the geographic source of goods, or combined with other elements may be allowed to register.

4. For the same applicants have registered trademark, containing public awareness of foreign place names the applicant again apply for a similar trademark, the stage before the court will consider the use of the trademark registration based has won the trust of interests, which would take into consideration the circumstances on the basis of case trial.
In this case, the name of goodwill is actually a specific production operators have created, foreign geographical names have a direct relationship between the specific commodities and producers. If you want to apply for the trademark applicant in this article, the most important is the use of powerful evidence, such as advertising costs, the breadth and scope time, sales and consumer cognition, etc.

 

Foreign geographical names are not created exclusively, which belongs to the typical public Shared resources, has congenital weaker significance, this also directly restricts the scope and degree of China’s trademark law protection related rights, censors so will give a more prudent attitude. Therefore the rejected rate suffered foreign geographical names is quite bigger, but as long as the factors based on the above summary of evidence of serious preparation, answer actively, it is possible to be registered.

 

Shanghai BOB Intellectual Property Service Ltd. IP Department
Author: Yao Xiaoqing
Jan. 30, 2015