It is reported that (Note: the link is in Chinese) Wakayama County of Japan recently announced that the trademark application for “Ji Zhou” (纪州) filed by a Hong Kong company on the Chinese mainland concerns a publicly well-know geographical name. The County has also filed an objection with the Chinese Trademark Office because this name is not appropriate to serve as a trademark. The report also stated that Wakayama County has been paying close attention to trademark applications in China since 2010 and has already had two objections granted against trademark applications for “Wakayama.” Today, we would like to discuss whether geographical names can be registered as trademarks:
I. Whether Chinese geographical names can be registered as trademarks depends on their administrative level
The Trademark Law provides that: “the names of places above the county level” may not be used as trademarks. According to the Trademark Office’s Trademark Review Standards, places above the county level include
County-level: counties, autonomous counties, county-level cities, and municipal districts;
City-level: cities, autonomous prefectures, districts, and provincial leagues;
Province-level: provinces, autonomous regions, and municipalities directly under the central government;
The two special administrative regions, namely Hong Kong and Macao; and Taiwan.
At the same time, the Standards also provide that geographical name includes the whole name, the abbreviation, and the pinyin spelling of geographical names above the county level, including provinces, autonomous regions, municipalities directly under the central government, provincial capital cities, municipalities, and famous tourist cities. In addition, even if the word is not the same as a geographical name, the application can still be rejected if it leads consumer misunderstanding. For example, the name “Ningsha” (宁厦) which is a homophone for the province of “Ningxia” (宁夏).
II. Whether foreign geographical names can be registered as trademarks depends on the reputation of the name
Aside from Chinese geographical names above the county level, the Trademark Law also provides that “foreign geographical names well known to the public may not be registered as trademarks.” There are also similar regulations in the Trademark Review Standards. It is worth noting that foreign geographical names have no administrative level limitation, and even some well-known names of very small places cannot be registered as trademarks, such as “Wall Street.”
Unfortunately, however, there are no relevant provisions defining “well known to the public.” In practice, there is usually no dispute for foreign geographical names with really high name recognition, such as Paris, New York, and London. Naturally, no one can use such names as trademarks. But, for some not so popular foreign geographical names, it is difficult to determine whether they are well known by public, such as “Wakayama” and “Ji Zhou” mentioned in the above case.
Judging from current practice, review of trademark applications by the Trademark Office is relatively strict. Trademarks of slightly famous geographical names generally will not pass through the Trademark Office. Even if the application does pass the review of the Trademark Office, the Office will usually focus on the protection of the name in order to stop or revoke the transfer of rights if someone files an objection for the reason that geographical names cannot be registered. For example, the two objections to the “Wakayama” trademark in the above case were both successful. From this point, the author believes that the objection to the “Ji Zhou” trademark is likely to succeed because “Ji Zhou” is a well-known tourist destination in Japan.
III. Exceptions of trademark applications of geographical names
Despite the above mentioned regulations, not all geographical names are unsuccessful in trademark registration:
1. Trademarks registered before the implementation of the Trademark Law
Geographical name trademarks registered before the implementation of the Trademark Law are not restricted and continue to be effective. Examples include, Qingdao beer and Harbin beer. Additionally, these trademarks have gained high significance through years of use.
2. Geographical names with other meanings
In China, there are a lot of geographical names that also express meaning beyond place name, such as “phoenix” county (凤凰) and “spring” city (阳春). Although “phoenix” and “spring” are geographical names “above the county level,” they can be used as trademarks because they contain even stronger significant meaning beyond the place name.
3. The geographical name is not the trademark’s main identifying element
According to the Trademark Review Standards, if the applicant only uses the geographical name as one part of a trademark, and the main identifying element is not the geographical name, the trademark application can obtain registration, such as famous “Paris Spring” and other trademarks.
(The picture used in this post is from Wikipedia)