China Trademark Distinctiveness: What CNIPA Looks For

A detailed logo is not automatically a stronger mark

Foreign applicants tend to spend the design budget on the artwork and the drafting budget on the goods list, and then meet a distinctiveness objection that points at neither. In CNIPA's examination practice the objection is usually about function rather than beauty: whether the sign does the one job a trademark has to do — let a buyer identify a source and remember it. CNIPA's own commentary on how the Trademark Examination and Adjudication Guidelines treat distinctiveness is unusually explicit about the tests behind that question, and three of them are worth knowing while a filing is being drafted rather than after a notice has arrived.

What the office asks a sign to do

Distinctiveness is defined as the characteristic a mark must carry so that the relevant public can distinguish the source of the goods or services. The Guidelines put content into that formula: the sign must enable consumers to recognise it, retain it, and in doing so indicate a source. Recognition, memory and attribution are treated as one chain — break a link and the sign has no function left to protect.

The practical consequence is counter-intuitive for designers. Characters or graphics too complex for a consumer to recognise and recall cannot distinguish a source, and are treated as lacking distinctiveness. Density of detail is not a proxy for strength.

The Guidelines also settle the vocabulary that appears in objections: "only", "the goods themselves", "generic name, device or model", "only directly indicates", "quality", "main raw material", "function", "purpose", "weight", "quantity" and other characteristics. Of these, "only" does most of the work. A sign that describes the goods and also carries something arbitrary is a different case from a sign that describes and stops there. Two routes to distinctiveness are recognised — inherent, and acquired through use.

The service side, which now carries most filings

The prohibition on registering non-distinctive signs is drafted around goods, and the provisions on goods marks apply to service marks, so the gap was one of illustration rather than substance. Services, however, behave differently in practice. In 2020 China received 9.116 million trademark applications; more than two million of them designated Class 35 advertising and related services alone. A service has no bottle, carton or label to carry the sign, so the mark has to work in signage, invoices, apps and staff uniforms, and examiners read service marks against that reality.

The Guidelines respond by extending the definitions to services — quality is described as the relative excellence of goods or services — and by adding examples in which a sign consists only of the generic name of the designated service, only of a generic device, or only of a statement about the quality of that service.

For services, the generic name is the activity itself. A device that the whole sector uses to depict the activity — a fork and knife, a stethoscope, a gavel — reads as a category rather than as a source, which is why a service mark so often has to be carried by a coined word or an arbitrary device instead of by a picture of the trade.

Sixteen kinds of sign that do not function as marks

The residual limb of the prohibition — signs lacking distinctiveness for other reasons — is where most foreign filings meet trouble, and the Guidelines enumerate sixteen categories within it. Four groups account for a large share of the objections.

Outer packaging is one. Ordinary consumers do not look at the outer packaging of goods as a badge of origin, and the container or the decorative pattern on it does not, by itself, possess distinctiveness. An elaborate bottle is still a bottle.

Ordinary language is another. Everyday expressions, internet buzzwords and meme images, and aphorisms or maxims are all treated as part of public expression rather than as source identifiers. A phrase that people already say belongs to the people who say it.

Then there is the applicant's own name: a sign consisting only of the full name of an applicant that is not a natural person is treated as hard to perceive as a mark. The same reasoning covers common symbols and festival names — both statutory festivals and names fixed by custom rather than by statute.

Two qualifications keep the list from being mechanical. A full corporate name combined with a device element may be distinctive as a whole. And universities, research institutes, hospitals and social organisations have registered their full names where long use has produced a one-to-one correspondence with the services actually offered, so that consumers are not confused; those names are treated as distinctive. The Guidelines also say the list is not exhaustive, and that each sign is judged on its own facts.

When the words fail, the whole mark fails

The rule with the widest practical reach concerns composite marks. Where a mark is made up of an independent word element and an independent other element, and the word element lacks distinctiveness, the mark as a whole is treated as lacking distinctiveness. The reasoning is that the word is the part spoken, remembered and used to order; a device cannot supply a name. The commentary also records two concerns behind the rule: that recognising such marks would blur the scope of the right, and that registrations of this shape have been used to press complaints against other traders on e-commerce platforms.

The procedure attached to the rule is the part applicants most often miss. Where the other element is strongly distinctive and the office considers that it may serve to distinguish source, an examination opinion may be issued asking the applicant to disclaim exclusive rights in the non-distinctive word element. If the applicant does not disclaim, or does not answer within the period set, the application is refused. A disclaimer is therefore not a formality appended at the end; it is the route by which a mixed mark with a generic word can proceed at all.

The design implication is plain. The word element has to be the registrable one, because it is the element that will be read out, searched and remembered.

Frequently asked questions

Does a detailed logo make a mark easier to register?

No. Detail and distinctiveness are separate questions. The test recorded in the Guidelines is whether consumers can recognise the sign, retain it and attach it to a source; characters or graphics too complex to be recognised and recalled are treated as lacking that function. Elaborate artwork can therefore work against a filing even where it works on a shelf, and the logic runs in both directions — a plain but arbitrary word carries a good deal of the work on its own.

Can a sign become distinctive through use?

The Guidelines recognise two routes: inherent distinctiveness, and distinctiveness acquired through use. The second route is why a descriptive or generic-looking sign is not considered on its face alone — the use made of it bears on the same question. What the office describes is a link between the sign and a source in the minds of the relevant public, and the full-name registrations held by universities and hospitals are described in exactly those terms: long use, a one-to-one correspondence with the services, and no confusion as to origin.

Is a company's full name registrable as a trademark in China?

A sign consisting only of the full name of an applicant that is not a natural person is treated as lacking distinctiveness, because consumers do not read a corporate name as a badge of origin for goods or services. Adding a device element can give the whole mark distinctiveness. Public institutions are treated separately: where long use has tied a university's, hospital's or research institute's full name to the services it provides, so that the public sees one source, that name has been accepted as distinctive.

What happens when only the device part of a mark is distinctive?

Where a mark combines an independent word element with an independent device element and the word element lacks distinctiveness, the mark overall is treated as lacking distinctiveness — a distinctive device does not rescue a generic name. If the office takes the view that the device is strong enough to distinguish source, an examination opinion may ask the applicant to disclaim exclusive rights in the word element. A refusal follows if the disclaimer is not given, or if the opinion goes unanswered within the period set.

Official sources

《商标审查审理指南》重点问题一问一答——商标显著特征的审查审理 — China National Intellectual Property Administration, Trademark Office, 8 February 2022.
关于发布《商标审查审理指南》的公告（第462号） — China National Intellectual Property Administration, 22 November 2021.
《商标审查审理指南》重点问题一问一答——不得作为商标标志的审查审理 — China National Intellectual Property Administration, Trademark Office, 8 February 2022.