Introduction：Recently, the State Council issued Outline for Building China with Strong Intellectual Property Rights (2021-2035) (hereinafter referred to as the “outline”). China will positively participate in the building and reformation of global governance system for intellectual property, supporting enterprises in establishing foreign risk prevention and control system for intellectual property. According to incomplete statistics, the total number of trademark applications filed by Chinese enterprise in foreign countries and regions is among the highest in the world. We believe that more and more Chinese enterprises will further promote the distribution of their trademarks in overseas countries and regions. 

Here, we will sort out and discuss the different grounds for trademark rejection and review opinions that may be encountered in the layout of trademark applications in overseas and provide some constructive countermeasures. 

In the process of trademark applications in overseas, we are quite familiar with rejections posed by registration of prior trademarks, lack of significance, having negative connotation. However, besides for above, grounds for rejections also have been posed by the principle of an application for a trademark, over interpretation to the meaning of the trademark, Chinese trademark is considered to lack distinctiveness, doubt whether the trademark applicant has real use intention, as well as review opinions regarding the associated trademark, trademark description, interpretation to the meaning, it is also often encountered in trademark applications of overseas countries and regions. Here we sum up one by one: 

I.Principle of an Application for a Trademark

The principle of one-trademark one-class application mainly refers to that the same applicant is not allowed to apply for the registration of the same trademark on the same goods or services, that is, repeated registration is not allowed. The main consideration of this principle is to avoid violating the public interests (i.e. duplication of rights).

Countries and regions: South Korea, Japan, Russia, Vietnam, Israel, Serbia, Peru, Brazil and other countries

It is advised to delete the repeat goods / services which are applied later. 

II.Over interpretation to meaning of Chinese trademark

Every word in Chinese has more than one meaning, but some countries over-interpret Chinese trademarks due to misunderstanding of Chinese, thus getting an interpretation to the meaning that is not conducive to obtaining approval for registration. 

In Thailand, for example, the trademark“曼妮芬” (Man Fen Ni in Pinyin) was rejected because the examiner found it to refer to “sweet and soft odor for the girl” and therefore identified it descriptive of the designation of "children's clothing."

Similar examples are as follows: 

“伊维斯” (Yi Wei Si in Pinyin) in Thailand is though to mean “these are the safeguards for him or her”; 

“强威” (Qiang Wei in Pinyin) in India is associated to describe the quality of goods. 

“QIANGWEI” in Israel is thought to refer to people’s names, a violation of their rights. 

It is recommended to assess the likelihood of a similar situation before applying for a trademark. When encountering such problems, it is recommended to communicate and explain in detail with the examiner and provide evidence/registration certificate from other countries to try to overcome them.

III.Chinese Trademarks are recognized to be lacked distinctiveness

Examination authorities of trademark applications in some foreign countries and regions hold the pure Chinese trademarks are lack of distinctiveness due to local people cannot recognize Chinese characters. 

Common countries and regions: Vietnam, Armenia, Norway. The Vietnam trademark application review authority will reject Chinese-only trademark application because they hold that Vietnamese consumers cannot recognize Chinese language (lack of distinctiveness), then, cannot understand the meaning of Chinese trademark, furthermore, cannot identify the source of goods or services through marks. 

It is recommended to file large number of evidence on use to show that the trademark has been identified through use. 

IV.Doubt whether the trademark applicant has the real use intention

In some countries, although the application for trademark registration dose not require the applicant to provide evidence of use before the application, from the value of the national trademark application registration system itself, the trademark application examination authority believes that according to the principle of good faith, the trademark application needs to have the true intention of use. For the case that there is reason to suspect that that trademark application lacks the true use intention, it will issue a rejection and require the trademark applicant to make explanation. 

Common countries and regions: Japan. A trademark application usually designates too broad a range of goods or services within a class, the examiner may doubt the applicant, in the current or in the near future, whether the applied trademark will be used on the designated goods or services, as a result, applications of trademarks have been rejected.

It is recommended that to overcome the rejection through filing evidence of use, or statement of use, plan of use, or delete goods of services. 

V. Trademark Association

Common countries and regions: South Africa, Oman, Papua New Guinea

In South Africa, if the identical or similar trademarks belong to the same applicant, the examiner will issue review opinion to require the trademark association. The result of trademark association is the associate trademarks should not be transferred to other persons separately, however, the advantage is that the evidence of the use of the one associated trademark can be used as evidence to prove the use of other associated trademarks. Therefore, when encountering such problems, it is suggested to accept the opinions of examiners and to associate trademarks. 

VI. Trademark Description/ Explanation for meaning

Common countries and regions: America. For the figurative mark, for application in China, only the trademark pattern is required, text description to the graphic mark is not required. However, graphic trademark application, in America, requires the application to provide text description to the graphic trademark. 

For example, the trademark“”, American examiner once suggested to explain as: The mark consists of an incomplete circle with an overlapping tail with 3 sections. In the middle of the incomplete circle is a solid oval. To the right of the circle and oval are 2 Chinese characters above the word‘LUMITIN’

Again, the trademark“”, also, American examiner suggested the applicant to explain the meaning of the trademark as: The English translation of the wording “BEN TENG” in the mark is “GALLOP”. The non-Latin characters in the mark transliterate to “BEN TENG” and this means “GALLOP” in English.

VII. Waiver of Exclusive Right

Different from trademark applications in China, some countries and regions will require to give up the exclusive right according to the fixed format explanation if words contained in trademarks are considered to lack distinctiveness in the examination of trademarks, for example: 

1)America – the trademark “EASY INTIMATES”

The examiner requires to give up the exclusive right on the word of “INTIMATES” that included in the trademark, furthermore, to make statement by following format: 

No claim is made to the exclusive right to use “INTIMATES” apart from the mark as shown.

2) America-trademark “印宣”

The examiner requires to give up the exclusive right on the word of “宣” that included in the trademark, furthermore, to make statement by following format: 

No claim is made to the exclusive right to use the non-Latin characters that transliterate to “XUAN” apart from the mark as shown. 

To sum up, there are great difference in the examination standards and methods of trademark applications in all countries around the world, and applicants may encounter various problems in the process of applications for registration of trademark. When encountering problems, please do not give up easily. It is recommended to actively seek professional solutions, to strive for approval of trademark registration, effectively protect the hard-won innovation achievement.