Throughout the lengthy process of applying for a trademark, even if the trademark is an invented word in a foreign language, examiners often assign various "translations" to it. This can lead to rejections based on absolute grounds such as lack of distinctiveness, potential for confusion, and negative implications. 

Despite the applicant's strong arguments during the refusal review process that the trademark in question is not a recognized term and should not be interpreted according to the examiner's translation, practical experience shows that these arguments often have minimal impact. Examiners frequently remain steadfast in their views. Consequently, the challenge of how to translate a foreign language trademark and whether such translations should be deemed lacking in distinctiveness, likely to cause confusion, or potentially harmful, poses a significant dilemma for applicants and their representatives. 

We would like to offer practical insights to help applicants and agents navigate the complexities of trademark refusal reviews.

Legal Framework for Foreign Language Trademark Translation

According to Article 8 of the Supreme People's Court's Provisions on Administrative Cases Related to Trademark Rights, when a disputed trademark is in a foreign language, its distinctiveness should be assessed based on the general understanding of the relevant public in China. 

Article 8 states that if the disputed trademark is a foreign language mark, the court must evaluate its distinctiveness according to how the relevant public in China perceives it. The inherent meaning of a foreign language in a trademark can influence its distinctiveness concerning the goods it designates; however, if the public has limited awareness of this meaning, and the trademark can identify the source of the goods, it may still be considered distinctive.

The regulations highlight two main points: first, the challenge of accurately understanding the common perception of the relevant public in China; and second, whether these provisions, which focus on the distinctiveness of foreign trademarks, also apply to issues of misidentification and negative impacts related to foreign trademarks.

In practice, to assess the distinctiveness of a foreign language trademark, it is essential to consult officially published reference materials and authoritative dictionaries to ascertain the meaning of the trademark. If a foreign language trademark is not found in an authoritative dictionary, this can serve as strong evidence that the meaning is not widely recognized by the Chinese public. 

For instance, in the DEMODEX trademark case, the CNIPA initially ruled that it could be translated as "Demodex mite," suggesting that its use on cosmetics merely indicated the functions and characteristics of the products, thus falling under Article 11, Paragraph 1, Item 2 of the 2013 Trademark Law. However, the first and second instance courts disagreed. They determined that establishing the Chinese meaning of the foreign trademark was crucial, and that authoritative dictionaries were the primary source for this meaning. Upon reviewing the evidence, the term "DEMODEX" was not found in reputable foreign language dictionaries like the Oxford Advanced English-Chinese Dictionary or the Longman Dictionary of Advanced Contemporary English, indicating that the public's awareness of this term in China was low and that it was not easily associated with "Demodex mite." Consequently, the use of the disputed trademark on designated goods like cosmetics did not directly indicate their function or characteristics, allowing it to serve as a source identifier and possess the distinctiveness required for trademarks, thus not falling under the prohibitions of Article 11, Paragraph 1, Item 2 of the 2013 Trademark Law. Furthermore, since the Chinese public had limited familiarity with "DEMODEX," it was unlikely to mislead them regarding the quality or origin of the goods, which means it did not violate Article 10.1.7 of the 2013 Trademark Law.

This ruling illustrates that in judicial practice, whether a foreign language trademark is included in an authoritative dictionary is a critical factor in determining its recognition by the majority of the Chinese public. Additionally, the courts in this case used this criterion to conclude that the trademark was not misleading. This indicates that the aforementioned provisions are also relevant for addressing issues like the misidentification of foreign trademarks.

国家知识产权局、北京沱沱河溯源技术有限公司诉马敏无效宣告(商标)二审行政判决书

The examiner's approach to translating trademarks in foreign languages

During the examination process, when an examiner translates a trademark from a foreign language, they typically consult authoritative dictionaries as well as the Internet. However, the Internet is saturated with information, and many online foreign language dictionaries often provide automatic translations without verifying the source. This has led to a proliferation of inaccuracies, as many online dictionaries have misrepresented certain words with specific Chinese meanings. 

Examiners frequently depend on these online translations to interpret the meaning of contested trademarks, which can result in rejections based on claims of lack of distinctiveness, deception, or potential negative impact. This situation poses significant challenges for applicants and their representatives, as once an examiner settles on a particular interpretation, it can be extremely difficult to persuade them otherwise during the review process, regardless of the applicant's explanations or supporting evidence. 

This issue not only highlights the rigidity of current review and trial standards but also indicates that examiners may not be fully adhering to the relevant regulations set forth by the Supreme People's Court and current judicial practices. Ultimately, it is the applicants who bear the consequences of this situation. Drawing from the author's practical experience, the following outlines the relevant challenges faced and potential solutions to discuss.

1. Intentional Disassembly

In cases involving a made-up foreign term, examiners often tend to break it down into separate words, creating an illogical interpretation based on their individual meanings, which they then use to reject the contested trademark. For instance, in the BIODERMA case, the CNIPA divided the invented name into "BIO" and "DERMA," interpreting the former as "biological" and the latter as "skin." They argued that, given its context of "skin care products; pharmaceutical preparations; treatments for skin diseases," consumers might easily perceive the trademark as a straightforward description of the properties, functions, and uses of the ingredients. Both the first and second instance courts supported the CNIPA's grounds for rejection.

However, in the retrial, the Supreme People's Court acknowledged that while "DERMA" does mean "skin," it is a well-established term. The court concluded that "BIODERMA" is not typically interpreted as "biological skin" by the average Chinese public, who may not have a strong understanding of English trademarks. Therefore, it is unlikely that the relevant audience would see it as a direct description of the characteristics, functions, or uses of the products. To assess the distinctiveness of the trademark, it is essential to consider the overall impression of the mark rather than relying on the meanings derived from splitting it apart. Consequently, the trademark was ultimately approved for registration.

Tips: During the rejection review process, it is important to highlight the unity of the invented mark and the lack of significance of its individual components to counter the examiner's fragmented translation and misinterpretation.

2. Forced Stacking

Another instance is the AquaComfortPLUS case. Initially, the trademark was broken down into three components: "Aqua," "Comfort," and "PLUS," which can be interpreted as "water, solution, and light green" based on their individual meanings. Each part has a specific meaning—"comfort" refers to ease, while "Plus" suggests superiority or enhancement. However, the ruling did not explain how these meanings collectively describe the "contact lens" product, making the interpretation somewhat tenuous and reliant on subjective judgment. Ultimately, the appellate court concluded that the trademark "AquaComfortPLUS" is made up of the three elements: "Aqua," "Comfort," and "PLUS." 

Tips: During the rejection review, it is crucial to highlight the overall distinctiveness of the trademark to prevent the examiner from concluding that the entire trademark lacks distinctiveness simply because some of its components have established meanings.

3. Far-fetch Interpretation

In the AMOURVINOWINERY Case, the trademark "AMOURVINOWINERY" was denied due to claims that it was detrimental to socialist values or had other negative implications. The CNIPA translated "AMOUR" as "adultery," leading to the conclusion that the entire trademark could be interpreted as "adulterous wine." The case's key issue was that the CNIPA stated during the trial that its interpretation of "amour" was based on online dictionary searches. However, the first and second instance courts noted that the CNIPA should not rely solely on online dictionaries for its findings. The applicant provided evidence from authoritative dictionaries, including the New Chinese-Chinese Law Dictionary and the French Dictionary of Common French Idiomatic Words, which defined "amour" as "love" and related terms. Based on this evidence, the courts concluded that the public would interpret "amour" as "love," while "vino" is typically translated as "wine" and "winery" as "winery," indicating that the trademark as a whole would not have a negative impact. 

Tips: During the rejection review, it is important to actively present the findings from authoritative dictionaries to correct any incorrect translations or interpretations of foreign words in the trademark by the examiner.

Conclusion

This discussion addresses solutions to the issues of "mistranslation" and "forced translation" of foreign trademarks by the CNIPA. However, it is important to note that, despite the existence of similar prior cases, China does not follow case law, and replicating this approach does not guarantee success. Given the CNIPA's large workload and the varying levels of examiners, rigid examination standards are common. Consequently, applicants often need to resort to litigation to achieve favorable outcomes and secure their trademark rights.