(By Luo Yanjie) Early in this year, JDB Inc., the famous herbal tea manufacturer argued with Guangzhou Pharmaceutical Company (the “GPC”) regarding ownership of the Wang Lao Ji trademark, which concluded in JDB being ordered to cease its use of the trademark. Now, JDB has begun its second battle with GPC, this time accusing GPC of infringeing the trademark “Ji Qing Shi Fen (吉庆时分).” Wanglaoji Health Industry Co. Ltd. (Guangzhou Wanglaoji Company) affiliated with GPC, recently made a statement that the State Trademark Office had accepted its application to revoke the registration of “Ji Qing Shi Fen (吉庆时分)”, the main reason being that the mark is considered generic in the sense that it is vocabulary in common use. Due to this, the State Trademark Office further advocated that it is uncertain whether there can be any exclusive right in the use of the registered mark.

As retrieved by us, the application for the trademark “Ji Qing Shi Fen (吉庆时分)” was made by the Hong Kong based Wanglaoji Company; Wanglaoji Company is actually under control of JDB. Despite the fact that the name of this Hong Kong Company is currently suspected of engaging in unfair competition, this fact will not influence its ability to apply for trademark registration in Mainland China. As for the trademark itself, “Ji Qing Shi Fen (吉庆时分)” can be considered a generic use of language, commonly used colloquially, and therefore, pursuant to the Trademark Law, this common use of these particular words together cannot be registered as a trademark in order to receive trademark protection. If this is the case, can it be said that what GPC has said regarding the “Ji Qing Shi Fen (吉庆时分)” mark’s inability to be a registered trademark correct? Please check today’s post for our opinions.

I. Only under limited conditions can a common expression be precluded from trademark registration

By Article 11 of the 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 first point in the above article only limits the ability for “generic vocabulary” to be registered as a trademark; for example, the word “engine” could not be used as a trademark for automobile products, but could be adopted as a mark for a particular brand of clothing. The second point is that “generic vocabulary” is only regulated to deny trademark registration to those words expressing a specific meaning, which would result in people being easily mistaken of confused. For example, “yummy” could not be applied as a mark for a food product, just as “running fast” cannot be used as a mark for sports shoes.

The third point quoted above is easily disputed; for the law provides us with no specified regulation on what are considered “distinctive features.” We will discuss this point in further detail below.

II. What is “lacking distinctive features”?

It is generally held that a distinctive feature is one in which the nature of the mark is to indicate the origin of the product or the service and to distinguish it from other companies’ product or service. But in the author’s opinion, the “distinctive feature” as provided here in in the Trademark Law shall refer to marks that have no chance to have distinctive features; for in most situations, a newly registered trademark has not been put in to use, and therefore could not possibly have any particular distinctive features to assist in distinguishing the origin of the product from others.

For this reason, the so-called “distinctive features” are necessarily acquired through use of the mark, but if the mark itself is just too simple, there is little possibility that the mark will gain any distinctive features through use. For that, the trademark office would surely have reason to deny the mark’s application. Surely, due to the uncertainty and complexity of the market, the judgment of the trademark office may also be incorrect, and therefore we have seen the following exception in the law:

“The signs under the preceding paragraphs may be registered as trademarks where they have acquired the distinctive features through use and have become readily identifiable.”

III. Personal opinion of the author: “Ji Qing Shi Fen (吉庆时分)” will not be revoked for it is a generic vocabulary

Basing on the above analysis, let us check again whether the “Ji Qing Shi Fen (吉庆时分)” mark could be registered a trademark as it is claimed to be generic vocabulary according to the Trademark Law.

First, the mark “Ji Qing Shi Fen (吉庆时分)” obviously does not conform to the statutory situations in the first two situations cited above. While it lacks a distinctive feature according to the Trademark Examination Standards, the “lacking distinctive feature” language generally indicates “overly simple lines, geometric figures and shapes, or overly complicated wording, pictures, numbers, letters, or a combination of the above elements, or one or two letters in their usual forms […].” All of these are generally too difficult to be recalled by the general consumers. The mark “Ji Qing Shi Fen (吉庆时分),” though it may be considered to be generic in meaning, has no meaningful relation with an herbal tea beverage. If generic vocabulary as a matter of statutory law cannot be used as a trademark, then how does one explain the mark “Apple” as being the mark of a globally famous computer product? In accordance with this reasoning, JDB’s “Ji Qing Shi Fen (吉庆时分)” mark being used as a trademark for herbal tea would not result in confusion as to products made and sold by other manufacturers; moreover, it could assist the consumer in distinguishing the origin of the product. So, in the author’s mind, it does indeed have distinctive features.

Surely, despite the author’s belief that “Ji Qing Shi Fen (吉庆时分)should be eligible for use as a trademark, taking into consideration the fact that the mark’s owner is a company known as “Wanglaoji,” once JDB claimed in its operation that “Ji Qing Shi Fen (吉庆时分)” is used under a license agreement with Wanglaoji, a claim for liability for unfair competition may be pursued. However, GPC’s use of “吉庆时分喝王老吉” (roughly meaning to drink a Wanglaoji beverage during celebrations and “good times”) would not necessarily constitute trademark infringement. For that issue, we would rather write an essay explaining the issues concerning the trademark use of “Ji Qing Shi Fen (吉庆时分)”.

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