Editor's note: Last week,we looked at the trademark application process.This issue,we turn our attention to the reasons why certain signs and trademarks are rejected.

Examination of an application for trademark registration includes examination of the form and the substance.

Examination of form covers two areas: the examination regarding the payment of fees and the examination regarding the application.

Applicants must pay the Trademark Office a 1,000 yuan fee for each trademark registration application. This is only charged for up to 10 goods or services, however. An extra 100 yuan is charged for every item beyond 10. If the applicant entrusts a trademark agent to deal with the application, additional agent fees are required.

Examination of an application covers the following: whether the required documents were completely submitted to the Trademark Office, whether the typed title of the applicant is as the same as that of the seal or signature, whether goods or services are correctly indicated and classified, and whether the mark reproductions meet the size and definition requirements.

A notification not to accept the application is issued by the Trademark Office if the application fails to meet the requirements. The Trademark Office will also issue a rejection notification if the applicant fails to pay the fees.

A notification to supplement or amend an application is issued when the application is basically complete or essentially in compliance with the stated provisions, but important elements are still missing. The application must be supplemented or amended, then returned to the Trademark Office within 30 days from date of receipt of the notification. When the supplements or amendments are made and returned within the specified time limit, the filing date is retained. If none are submitted before the time limit expires, the application is considered abandoned.

The need to supplement or amend the application could mean that the indicated goods or services are vague, the products or services are mistakenly put in the same class, or the trademark reproductions are not clear enough.

Examination of substance means the Trademark Office determines whether a trademark is legitimate for registration. Under the Trademark Law, examination of substance is divided into two areas: examination of identical or similar marks for different goods or services, and examinations concerning whether a trademark can even be registered in the first place.

As stated in Article 28 of the Trademark Law, applications that are identical or similar to previously established trademarks will be refused. Trademarks are refused for the following reasons: identical marks for the same goods or services, similar marks for the same goods or services, identical marks for similar goods or services, and similar marks for similar goods or services. In practice, these are referred to as relative grounds.

Identical marks are two trademarks with no difference in meaning, appearance or pronunciation.

Similar marks are two trademarks with slightly different meanings, appearances or pronunciations. They are still likely to confuse consumers, however.

The same goods or services refer to items that have the same names, functions, or materials.

Similar goods or services indicate items that have similar uses or functions.

Examination to determine whether a trademark can be registered refers to situations where the Trademark Office examines whether the trademark applied for violates prohibitive provisions in the Trademark Law. A trademark can be registered if it does not violate prohibitive provisions and does not conflict with registered or preliminarily approved trademarks. If it violates any prohibitive provisions, however, the application will be rejected. Reasons for refusal are absolute.

Grounds for refusal

Under Article 10, the following signs shall not be used as trademarks:

(1) Words or devices identical with or similar to the State name, national flag, national emblem, military flag, or decorations of China, those identical with the names of particular venues where government organizations are located, or with names or graphs of symbolic buildings of State government organizations. The names of particular venues, such as The Great Hall of People, are prohibited as trademarks.

(2) Words or devices identical with or similar to State names, national flags, national emblems, or military flags of foreign countries, except when consent has been given by the relevant country's government.

Full names, shortened forms or abbreviations of foreign countries like "USA," or names similar to foreign countries, such as "Austalis," cannot be used or registered as trademarks. A trademark containing a country's name, however, can be registered for certain goods or services.

(3) Words or devices identical or similar to names, flags, or emblems of international intergovernmental organizations, except when consent has been given by the relevant organization, or if the use is unlikely to mislead the public.

(4) Words or devices that are identical or similar to names or symbols of the Red Cross or the Red Crescent. These signs must be respected.

(5) Words or devices that are discriminatory.

(6) Words or devices that are exaggerated and deceptive.

Exaggeration means that a sign exceeds the inherent nature of the goods. Fraud means that a sign conceals the truth about a product and misleads the public. The term "Health", for example, cannot be used as a cigarette brand name.

(7) Signs that are detrimental to socialist morals or customs, or have other unhealthy influences.

The above points are covered in Section 1 of Article 10. Geographical names are not to be used as trademarks, as stated in Section 2. Names such as Beijing, Shanghai, Guangdong, London, the White House, Manila, and Hanoi cannot be registered as trademarks.

If a geographical name is an element of a collective mark or certification mark, however, it may not be rejected because collective marks or certification marks can be used to indicate the true origin of the goods.

Bad signs

Under Article 11, the following signs cannot be registered as trademarks:

(1) A generic name that indicates a scientific name, or the name of goods or services established by usage. Generic names lack distinctiveness, making them difficult to register.

(2) Signs that directly refer to the quality, raw materials, functions, intended purpose, weight, quantity or other characteristics of goods services.

Trademarks consisting exclusively of the above signs are prohibited for the following two reasons. These signs are so common that people use them to describe goods or services produced or supplied. The signs therefore may not function as a trademark to distinguish goods or services of different producers or suppliers. Secondly, these signs are devoid of any distinctiveness because they indicate characteristics of goods or services.

(3) Signs that are devoid of any distinctive characters.

There is a provision in Article 11 of the Trademark Law, the "lack of distinctiveness", which covers the following circumstances. If a sign is too simple or too complicated, then it might not be clear which part is to be protected. Secondly, signs that exclusively consist of common trade terms, such as Co, Ltd, and Company, are frequently used in business circles. If monopolized through registration, other parties would not be allowed to use the names, which would be unfair.

Under Article 12, three-dimensional signs cannot be registered if they are exclusively shaped like the goods themselves. These marks should not describe the function of the goods, or they may be refused.

Under Article 16, trademarks are refused if they mislead the public with regards to the goods' place of origin.

These are all the basic elements of trademark registration applications and examinations.

There are other things to consider as well, including opposition procedures in the Trademark Office, review before the TRAB (the Trademark Review and Adjudication Board under the State Administration for Industry and Commerce) for refusal, opposition decisions from the Trademark Office, and lawsuits concerning decisions of the Trademark Office and the TRAB before court. A new feature in the revised Trademark Law establishes a judicial review system for final administrative decisions, which accords to the provisions of the TRIP Agreement governed by the World Trade Organization.

China has a trademark application procedure and a full examination system. Parties can apply for registration and protect the exclusive right to use their trademarks.

(China Daily 10/17/2005 page9)