Deceptive Trademarks in China

Deceptive trademarks may not be registered in China, according to Article 10(7) of the Trademark Law. While the reasoning behind this prohibition makes sense, the China National Intellectual Property Administration (CNIPA) sometimes interprets the statute in questionable ways. To avoid issues, brands registering their trademarks in China should avoid using any marks that may be considered deceptive, in whole or in part, under CNIPA’s low threshold.

Article 10(7) stipulates that trademarks that “are deceptive and are likely to mislead the public in terms of the quality, place of production or other characteristics of the goods” may not be registered.  U.S. trademark law has a similar provision, barring the registration of trademarks that consist of “deceptive” matter (15 U.S.C. § 1052(a)). One hypothetical example of a deceptive trademark is “Rum 151”, if used in connection with rum that is not, in fact, 151 proof. Alcohol content is one of rum’s characteristics; use of “151” on 80 proof rum is likely to mislead the public. Under circumstances such as these, CNIPA’s refusal to register arguably serves a valuable function: No one should be duped into preparing a weaker Cuba Libre.

At times, however, CNIPA’s interpretation of Article 10(7) can be unduly broad. Recently, CNIPA rejected an English-language mark that is something like “Top World Products”. (This is a case we’re handling, so we cannot tell you what the actual mark is, sorry!) CNIPA’s rejection notice did not specify exactly why the mark was deceptive, or even which part of the mark was considered deceptive, but it appears that the beef was with the word “top”. Apparently, the public might be “misled” as to the quality of the goods associated with the trademark if they are described as “top”.

CNIPA seems to take a dim view of Chinese consumers. Do they really think that they will assume that Top World Products are in fact the “highest in position, rank, or degree” in the market, just because the brand name includes the word “top”? Not to mention that those members of the Chinese public who understand the English words on the trademark might also pick up on the fact that “top” modifies “world”, not “products”.

The fact that a trademark is in a foreign language may help prod CNIPA into finding that the same is deceptive, given concerns that Chinese consumers might not understand certain linguistic nuances. But CNIPA appears to have issues with the Chinese term “最好” (“best”) as well, with applications that include that word generally denied.

It’s hard to believe that CNIPA is really concerned over actual deception in these cases. A more plausible explanation is that CNIPA does not want the trademark registration process to enshrine a particular brand’s superlative claims. After all, if one brand got to register “Spiciest Chili Sauce”, no other brand would get to make the same claim, at least in the form of a trademark (for what it’s worth, CNIPA has not registered any marks with the term “最辣” in connection with actual foodstuffs).

In any case, CNIPA’s approach is unnecessarily crimping the creativity of brands and making it harder to avoid trademark similarity, without any actual benefit to the public. Ultimately, though, that is irrelevant to trademark applicants in China. Knowing how strict CNIPA is, what trademark applicants need to do is ensure that their marks cannot be considered deceptive in any way, based on CNIPA’s peculiar understanding of that term.