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Registering place names as China trademarks. Yes and no.

One of the rules for filing a trademark in China is that geographical names are generally off limits.  This can be both good and bad.  If you make Seattle Suckers in China strictly for export from China, this is a good thing.

 

It is a good thing because it means you do not need to spend money on what is known as a “defensive trademark,” which is a trademark that is filed simply to prevent someone else from filing it and then blocking you from using it.  It is this need to file that prompted us to write the post, China: Do Just One Thing. Trademarks.  But if nobody can file the trademark and you will not be selling your product or service within China, there is little to no benefit in your filing for that trademark.

But it is a bad thing if you are going to sell your product or service in China.  Take Seattle Suckers as an example.  Since nobody can file for a trademark for Seattle Suckers, nobody can secure trademark protection for it andeverybody can use that name for themselves.

But here is where it gets tricky.

China’s trademark law sets forth all sorts of standards regarding which Chinese place names can be registered as trademarks and which cannot. The standards generally say that cities, districts, provinces and special administrative regions (Hong Kong, Macao, and Taiwan) are off limits for trademarking. But the standards also say that no trademark will be accepted if the name will lead to consumer misunderstandings.  So for example, it is very unlikely that anything really close to a well-known Chinese place name will be accepted.

But things really get interesting when it comes to foreign place names.  The standards dictate that “well known” foreign geographical names cannot be registered as trademarks.  But what constitutes well-known?  Surely New York, Istanbul, Hanoi, and Tokyo.  But what about Peoria, Kalamazoo, Ottumwa, French Lick, or Wrigleyville?

Hard to say.  Really hard to say.

We have registered China trademarks containing names of what we thought were really famous places outside of China, but we have also been turned down trying to register names of some pretty obscure places. It really is hit or miss. Or as we lawyers love to say (and our clients hate hearing), this is an interesting area of law.

Now before anyone writes to point out that what we have said above cannot be true and Qingdao beer is proof of that, you should note that there is an exception for trademarks that were registered before China’s Trademark Law was enacted.  The same is usually true for place names that also have meaning separate and apart from their use as a place name. Perhaps most importantly, if the geographical name is just a part of the trademark and is not the primary identifying portion of the name, it is also possible to secure registration.

Confused? Sorry.  This is one tough area and much of the time one does not know what will happen until it happens.

Anyone have any good trademark stories relating to place names?


Dan Harris is founder of the Harris & Moure law firm, a boutique international law firm focusing on small and medium sized businesses that operate internationally. China is the fastest growing area for the firm. Dan writes ChinaLawBlog.com as a source of China legal and business information.

 

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