[author: Min Cao]
In recent years, global economic and cultural exchanges have become more and more frequent, and both overseas multinational companies and Chinese trends enterprises have invariably chosen alphabetic trademarks, using in combination with Chinese character trademarks, or using alone. For example, “Apple”, “Safeguard”, “frestec”, “youngor”, etc. Among them, there are many coined words created by major brands after thorough consideration, which give people a sense of freshness at first glance, and are one of the common ways to create trademarks. In this article, the author will analyze and discuss the inherent registrability English coined trademarks based on cases in the practice of trademark registration examination and review.
I. What is a “Coined Trademark”
Coined words are usually words that are made up based on subjective imagination and creation. In the case of trademark registration, the trademark designer may, according to the characteristics, functions and purposes of the designated goods or services, use a variety of methods and justifications to create new words that have never existed before on the basis of combining the principles of language, psychology, marketing and other disciplines.
There are five common methods to create coined trademarks: (1) abbreviation, (2) combination, (3) spelling, (4) variation, and (5) affixation.
Since coined word has no intrinsic and specific meaning, if registered as a trademark, it will not be associated with any goods or services. As such, it is theoretically distinctive for all goods and services. In addition, as the trademark itself does not have a fixed meaning, it will not come into contact with prohibitive legal provisions such as “deceptive and likely to mislead the public in terms of the quality and other characteristics of the goods or the place of origin (Article 10.1.(7) of the Trademark Law)”, “detrimental to socialist ethics or customs, or have other unwholesome influences (Article 10.1.(8) of the Trademark Law)”.
II. From the Perspective of “Chinglish”, the Application of Coined Trademarks is Facing Many Difficulties
However, in the practice of granting and confirming trademark rights, the journey of registration application of coined trademarks is far from being as smooth as expected, and there are often cases where rejections are made based on absolute grounds such as lack of distinctiveness, misidentification of quality, etc.
The author will try to provide some real cases to help you understand the actual situation in which coined trademarks repeatedly encounter a wall of rejection in the examination and review of trademark applications:
[Table 1: some refusal appeal decisions/judgments related to the refusal notifications of coined words in practice]
As shown in the cases in Table 1, the English part of each applied-for-mark is composed of multiple English letters in the same font and size, and there is no space in the middle, or interspersed with capital letters, etc., to imply that the trademark is composed of two parts. Each mark is a complete and inseparable combination of English letters in appearance, and there is no relevant explanation in the major English-Chinese dictionaries, which is a contrived word.
However, according to the content of the decisions/judgments, the three (3) trademarks in the above table were all initiatively split by the examiner and then combined the meanings of each part to determine whether they are registrable. In particular, in the second trademark, the “SWEET” part was even split and separated from the English word “EVERSWEET” to emphasize its meaning.
This type of rejection often makes the applicant confused, and it is difficult to understand the specific reason for the rejection of the trademark. Even if it is possible to guess that the trademark application encountered an unconventional interpretation of the meaning derived after it has been split, the applicant may still be perplexed about why the examiner would use this seemingly random split method to conduct the examination.
In fact, regarding this issue, as early as 2008, the lawyer JIANG Liwei, then a judge of the Administrative Tribunal of Beijing No. 1 Intermediate People’s Court, provided the following analysis in an article published in 2008:
The level of awareness of the average Chinese consumer is still at the level of Chinese English. The so-called “Chinglish” refers to the way of thinking to understand, accept and express English in Chinese.
First, due to a lack of comprehensive knowledge of the English language, it is not possible to accurately distinguish between the above words and phrases as coined words or existing English expressions. Therefore, the “coined word” attribute of the above-mentioned trademarks, which is important in the context of standard English, is difficult to be included in consideration in the context of Chinese English.
Based on the above, when the examiner or judge determines whether an English coinied trademark is registrable, the examiner or judge takes the initiative to split or separately extract a part of the mark for examination, mainly considering the general acceptance of English among Chinese consumers, as well as the impact of the Chinese spelling and reading habitual way of thinking on the relevant Chinese public’s perception of English trademarks, and from the perspective of eliminating risks as much as possible.
In practice, after a coined trademark is split and examined separately, the grounds for rejection are mostly absolute provisions such as Article 11.1 (lack of distinctiveness), Article 10.1.(7) and 10.1.(8) (misleading, unwholesome influences) of the Trademark Law. Such reasons for rejection are relatively difficult to overcome in refusal appeal and administrative litigation.
It is difficult to say whether this method of split examination is appropriate or not, but the emergence of this phenomenon is indeed worth noting.
III. Notable Points When Using “Coined Trademarks” in Practice
- Notable Points in the Design of Coined Trademark
In order to avoid such refusal grounds as much as possible, the trademark designer can give preference to the other four methods to form words except combination when creating a coined trademark, and pay attention to examining and repeatedly speculating on its meaning from the perspective of “Chinglish”.
The reason for this is that the combination method is by definition to produce a coined word by arranging two or more words in a certain order without variation, and this “just coincides” with the above-mentioned split examination logic. Therefore, it is advisable to try to do the opposite.
Of course, this does not mean that the combination method of coined word formation cannot be used at all, but when using the combination method, it is recommended to avoid using words that are closely related to the characteristics of the specified goods and services, such as raw materials, functions, purposes, etc., and also to pay attention to whether there is any unwholesome influence in how the composing elements are understood before they are combined.
- Countermeasures to the Rejection of a Coined Trademark after being Split Examined
After a coined trademark is examined and rejected by split examination, the applicant can continue to fight for its rights through refusal appeal, administrative litigation, etc. In the Annual Report on Intellectual Property Cases of the Supreme People’s Court (2022), the “Bioderma” Trademark Refusal Appeal and Retrial Case may provide us with some ideas to solve the problem. This case is a retrial case of the administrative litigation for the refusal appeal of the “BIODERMA” trademark (Application No. 29087232). The China National Intellectual Property Administration (“CNIPA”) split the trademark “BIODERMA” into “BIO” and “DERMA” in the administrative stage, and concluded that the overall meaning of the trademark was “biological dermis”, and then concluded that the trademark as an entirety lacked distinctiveness and will cause a likelihood of confusion. With regards to the above, the Supreme People’s Court clearly pointed out that:
To determine the distinctiveness of the disputed trademark, it should be mainly considered from its overall constituent elements and meaning, and the combination of root definitions after splitting cannot be simply and rigidly used as a basis for determining that “BIODERMA” has an inherent meaning.
From the above case, we can see that the Supreme People’s Court holds a negative attitude towards the current “simple and rigid split examination” of the CNIPA, which also has a very high guiding role in the judicial adjudication of administrative cases and even the administrative decisions of administrative organs.
The author has noted that in the trademark refusal appeal decisions made by the CNIPA in 2023, there have been many cases in which rejections by the split examination method have been actively corrected during the review stage. Some of the cases are shown in Table 2 below.
[Table 2: some refusal appeal decisions related to coined trademarks]
As shown above, in the examination stage, some coined trademarks were rejected on the grounds of lack of distinctiveness, misleading, unwholesome influences, etc., after the split examination, but in the refusal appeal stage, on the premise of emphasizing that the applied-for-mark is a coined word, the applicant may turn a defeat into a victory in the appeal stage by arguing based on its own prior registration or use of the trademark and similar examples of prior registered trademarks, and clearly pointing out the unreasonableness of the split examination method.
This shows that in the current practice of trademark registration examination and adjudication, although it is difficult to overcome the rejection of the forcible split interpretation of the coined trademark, it is not a desperate situation.
Based on the above, English coined trademarks have been adopted by many enterprises due to their natural advantages of having no fixed meaning and being accepted by a wider range of the international public. In view of the current practice of trademark examination and adjudication, if you want to avoid unnecessary refusals as much as possible, it is recommended that enterprises should cautiously review with the perspective of “Chinglish” when selecting a coined trademark. Even if in practice, there is a risk of being split for interpretation and rejected due to the problematic examination method, the right can still be fought for through refusal appeal, administrative litigation, etc.
