1. Legal rule
Article 10 of the Chinese Trademark Law prohibits the use as trademarks of signs identical or similar to the name of a foreign country, unless that country's government agrees. Country names include full names, short names and abbreviations.
2. Examination standards
A mark with words identical to a foreign country name is treated as identical to that name. A mark containing a country name, or wording resembling it, is treated as similar. Examples in the original article include “FRANCE and device” for travel bags and “CANADA LIGHT” for cigarette filters.
Six exceptions are described below.
First, the government concerned agrees to registration. The applicant should submit written approval to the Trademark Office. If the mark is already registered in that country, its registration certificate is treated as evidence of approval.
Second, the mark has another clear meaning and will not mislead the public. For example, “Frank” for shoes and clothing resembles “France”, but also means candid or direct and can be a person's name.
Third, the mark resembles a country's former name. “花旗”, an old Chinese name for the United States, is an example for clothing. It would nevertheless be refused for ginseng if likely to mislead the public about the goods' origin.
Fourth, the mark consists of abbreviations of two or more country names without misleading the public about origin. “中法 and device”, combining the abbreviations for China and France, is an example for lighting apparatus. A corresponding “中法” mark for wine would be refused if likely to mislead consumers about origin.
Fifth, wording identical or similar to a country name forms part of a mark that, as a whole, is the applicant's name. DEUTSCHE BANK for financial services is an example where the applicant is Deutsche Bank.
Sixth, the country name is independent of the mark's other distinctive elements and merely indicates the applicant's actual country. “TRUFFETTES de FRANCE and device” for chocolate is an example.
3. Filing recommendations
If a mark contains a country name such as Japan, the applicant is advised to apply in Japan first and subsequently in China, submitting the Japanese registration certificate as evidence of government approval.
If the Chinese application is filed first and refused, the applicant should seek review before the Trademark Review and Adjudication Board (TRAB) to keep the application pending, while applying in Japan as soon as possible. The Japanese registration certificate can be submitted to TRAB later.
A copy of the Japanese registration certificate is acceptable in China; notarisation and legalisation are not required.
