The fundamental function of a trademark is to identify the sources of goods/services so that a stable corresponding relationship between the trademark and the designated goods/services can be established. In business operations, many enterprises and applicants prefer short and easy to remember slogan for the promotion and marketing for their products in order to enhance the publicity and reputation of the brand. To achieve better protection, they also would like to apply for trademark registration at the same time. But in practice, it is not easy to achieve the registration such trademark application.
According to Article 11.1 (3) of Trademark Law of the People's Republic of China, the following signs shall not be registered as trademarks: Those otherwise lacking distinctive features. During the examination, it is common that CNIPA will believe such trademark is likely to mislead the public to recognize it as a slogan or advertising language, and then refuse the trademark application pursuant to Article 11.1 (3) of Trademark Law for lacking distinctive features. For example:
- Trademark No. 29917838 “美时美克尽在美家” in Class 20 was refused due to Article 11.1 (3);
- Trademark No. 42094283 “释放你的活力” in Class 35 was refused due to Article 11.1 (3);
- Trademark No. 40707583 “ENJOY THE DAY” in Class 35 was refused due to Article 11.1 (3);
- Trademark No. G1275837 “HOTELS THAT DEFINE THE DESTINATION” in Class 43 was refused due to Article 11.1 (3);
- Trademark No. 48565991 “WISH YOU WERE HERE” in Class 43 was refused due to Article 11.1 (3);
- Trademark No. 25494847 “UNLOCK THE FUTURE WITH THE POWER OF LIGHT” in Class 7 was refused due to Article 11.1 (3).
The above trademarks were all forbidden from trademark application since CNIPA believes them lacking distinctive features and are not easily distinguishable, which violates Article 11.1 (3) of Trademark Law though the applicants submitted relevant evidence and argue their mark acquired distinctiveness through long term use.
But there are exceptions, the signs may be registered as trademarks after they have acquired distinctiveness and become easily distinguishable through use. As for Trademark No. 29364059 “这！就是街舞” in Class 41, the CNIPA believes this mark has acquired distinctiveness and be more recognizable through use and can be approved for trademark registration. Many court judgments also mentioned that if the trademark itself lacks distinctive features, it shall be considered with relevant evidence to determine whether the mark has acquired distinctiveness and become distinguishable. If the applicant could submit sufficient evidence to prove the same, the slogan still has the chance to register as a trademark. In addition, if the applied trademark can be combined with other distinctive elements, such as word or design, it could increase the chance of success as well. For example, Trademark No. 3858894 " " in Class 36 and Trademark No. 15280134 “L'OREAL BECAUSE I'M WORTH IT” in Class 3 are registered.
The registration of slogan as a trademark is like a double-edged sword; although it would be easier to enhance the publicity and reputation of the brand, it is quite difficult to obtain the registration compared with other ordinary trademarks. However, the chance still exists if the slogan can be recognized as distinctiveness and distinguishable that consider the sign, detailed goods/services items, actual use, etc.