China Trademark Place Names: Nine Categories to Avoid

Filing a brand that names a place: the problem in one paragraph

Brand names borrowed from geography are everywhere: a city, a region, a mountain, a river. Outside China, a place name inside a mark is mostly a question of whether consumers come to associate it with you. In China it is also a question of what the name claims about where the goods come from, and the office treats that claim as a threshold matter rather than a marketing one.

In January 2023 the China National Intellectual Property Administration (CNIPA) published its Guidelines on the Application, Registration and Use of Trademarks Containing Place Names. They were written to improve parties' understanding of the prohibitions that apply to place-name marks, the stability risk that attaches to a registration of this kind, and the boundaries of the rights it confers. They cover three things: the categories of place-name signs the office flags, how a registered mark containing a place name should be used and enforced, and how other traders may use the same place name. What follows summarises that document for applicants outside China.

The nine categories the Guidelines flag

The Guidelines open with a warning that runs through the rest of the text: applications of the kinds described below can be refused on absolute grounds, and a mark already registered can face invalidation.

Foreign country names in this guidance. A sign containing, identical to, or similar to a country name - Spain, Latvia and Andorra are the examples given. Three situations fall outside the prohibition: consent of that country's government; another clear meaning without misleading the public; and a country-name part that is independent of the other distinctive elements and serves only to indicate truthfully the applicant's own country.

Place names at or above county level. The term covers provincial-level divisions (provinces, autonomous regions, municipalities and special administrative regions), prefecture-level divisions (cities, prefectures, autonomous prefectures and leagues) and county-level divisions (districts, counties, county-level cities, autonomous counties and banners). The exact list is taken from the Ministry of Civil Affairs' publication of the administrative divisions of the People's Republic of China. Five situations are flagged: a mark made up of such a place name; a mark containing one; a mark close enough in form or pronunciation to be taken for that name and mislead the public about origin; a mark made from the abbreviations of two or more divisions that misleads about origin; and a place name that has another meaning but is combined with a character such as city, county or district so that the place-name meaning becomes obvious. The examples run from Anhui, Inner Mongolia and Chongqing through Hong Kong, China, Hefei, Yanbian and Aksu to Feidong, Fengning and Chaohu, and include the single-character abbreviation Ji for Hebei, the pinyin spelling "Anhui", and the pair Qinghai-Tibet and Sichuan-Tibet for sightseeing tours.

Foreign place names known to the Chinese public - in full, abbreviated, in the original spelling, or in the common Chinese translation. Three situations are flagged: a mark consisting of such a name; a mark containing one where origin is likely to be misread; and a mark close enough in form or pronunciation to be taken for the name. The examples are Havana, Massachusetts, Tuscany, Florence, and near-miss spellings such as Xiao Bali.

Place names below county level, and foreign place names the Chinese public does not know. The guideline highlights regions known for particular goods or services where use on the designated goods or services is likely to mislead the public about origin. This is not a general permission for every other place name; other deception, distinctiveness and public-interest grounds remain relevant. The two examples are Xijiekou, a town under the Shilin Yi Autonomous County of Kunming in Yunnan, known for its ginseng fruit and garlic, and Imabari, a Japanese city whose towel output ranks first in Japan.

Place names with political significance, including former revolutionary base areas and the sites of major political events. The example is Xibaipo.

Names of national-level new areas and key development zones, and their standard abbreviations, where the name is closely tied to the country's overall development strategy. The examples are the Xiong'an and Pudong new areas and the Guangzhou Economic and Technological Development Zone. A written document showing approval by the State Council, or by a department authorised by it, takes a mark outside the prohibition.

Names of religious activity sites and venues - Buddhism, Taoism, Islam, Christianity, Catholicism, their denominations and popular belief. The examples are MECCA, Xuanmiaoguan (a Taoist temple name) and Yonghegong (a Tibetan Buddhist monastery).

Names of major national undertakings and projects containing place names. The example is the Hong Kong-Zhuhai-Macao Bridge, where the applicant was a natural person surnamed Xie who had not submitted the authorisation documents. Written proof of authorisation from the relevant department, together with the absence of any negative effect on social public interest and public order, takes a mark outside the prohibition.

Public resource names - mountains, rivers, scenic spots and buildings - filed in bulk without any intention to use.

Two exclusions run across the list: a place name independent of the other distinctive elements and serving only to indicate truthfully where the applicant is located, and a place name forming part of a collective or certification mark.

Using and enforcing a mark that contains a place name

The Guidelines devote their second part to the life of the registration. A registrant must use the mark as registered: the sign as approved, on the goods or services as designated. The place-name part may not be altered, emphasised, simplified, added to, distorted or split out for separate use. Protection for other goods or services, or for a changed sign, has to come from a new application. Collective and certification marks containing place names must be used in accordance with the management rules submitted at registration.

On enforcement, the Guidelines set the tone with good faith and the prohibition on abusing rights. Bona fide use of a place name merely to indicate geographic origin, outside its trademark sense, is legitimate use, and the registrant cannot prevent it on the sole ground that the same place name appears in its registered mark. Other traders must respect registered marks and stay within fair and reasonable use: bona fide, non-trademark indication of origin only, no free-riding on the mark's reputation, no confusion as to source, and no using a place name that is not the actual place of origin.

Assigning the mark, and checking a name before you file

On assignment, the Guidelines warn against transferring a place-name mark to a transferee whose actual use would mislead the public about origin or source. For a collective or certification mark containing a place name, the transferee must also meet the qualification requirements in the Measures for the Registration and Administration of Collective and Certification Marks and in the Trademark Examination and Adjudication Guidelines.

The final part is practical. For whether a Chinese place name sits at or above county level, the Guidelines point to the administrative divisions map published by the Ministry of Civil Affairs. For prior cases in which place-name marks were refused, they point to the trademark review and adjudication documents site of the CNIPA trademark portal, the Beijing courts website, and China Judgements Online. They add a caution worth repeating: examination follows a case-by-case approach, and different cases may reach different conclusions for a variety of reasons, so prior cases are for reference only.

CNIPA published the Guidelines on the same day as a companion set of guidelines on the signs that may not be used as trademarks, listed below.

Frequently asked questions

Does a place name in a mark always prevent registration?

No. The Guidelines themselves set out the exceptions. A place name is outside the prohibitions where it is independent of the other distinctive elements of the mark and only indicates truthfully where the applicant is located, and where it forms part of a collective or certification mark. For the foreign country-name situations described in the guidance, assess government consent, a clear other meaning without public misidentification, or an independent country-name element used only to truthfully indicate the applicant’s country. These conditions do not grant blanket permission to use China’s state name or state symbols.

My brand is named after a foreign city. Is that a problem?

It depends on how well the Chinese public knows the name. The prohibition covers foreign place names known to the Chinese public, whether in full, abbreviated, in the original spelling or in the common Chinese translation - Havana, Massachusetts, Tuscany and Florence are the Guidelines' own examples. For less familiar foreign place names, the guideline highlights regions known for relevant goods or services where use is likely to mislead about origin. Lack of general public recognition is not itself a registration guarantee.

Can a registrant stop a competitor from using the same city name?

Not for bona fide use alone. The Guidelines treat use of a place name merely to indicate geographic origin, outside its trademark sense, as legitimate use, and say the registrant has no right to prohibit it on the sole ground that the same place name appears in the registered mark. Other traders must still respect the mark: no free-riding on its reputation, no confusion as to source, and no using a place name that is not the actual place of origin.

Are romanised Chinese place names treated the same as the characters?

Yes. The Guidelines' own examples include the pinyin spelling "Anhui" and the single-character abbreviation Ji for Hebei, alongside the two-part pair Qinghai-Tibet and Sichuan-Tibet for sightseeing tours. Forms that are close in shape or pronunciation to a place name, without being identical, are also flagged where the public will take them for that name.

Official sources

Guidelines on the Application, Registration and Use of Trademarks Containing Place Names - China National Intellectual Property Administration, 19 January 2023
Guidelines on Signs Prohibited from Use as Trademarks - China National Intellectual Property Administration, 19 January 2023
Administrative divisions map of China - Ministry of Civil Affairs of the People's Republic of China