In recent years, with the rapid development of the Chinese economy and the continuous growth of Chinese enterprises, more and more companies have expanded their business to various overseas countries and explored overseas markets. However, due to differences in national conditions, customs, and legal systems among different countries, the process of exploring overseas markets has not been smooth. Especially for Chinese trademarks that have already gained a certain level of popularity in China, they may not be able to obtain registration or protection in other countries. The inability to protect their own brand in foreign countries in a timely manner has greatly affected the pace of their business going global. India is one of the countries where Chinese companies encounter more rejections in the process of setting up Chinese trademarks overseas. This article shares some experiences on the examination of trademark registration applications in India and the precautions to be taken in the process of registering Chinese trademarks in India, in order to help companies reduce the risk of rejection in Chinese trademark registration applications in India, avoid unnecessary rejection, and ensure smooth business operations.

1、 Overview of India

Understanding the general situation in India can help to better plan the export of trademarks to India. When encountering problems, it can be flexibly handled, enabling the smooth registration of trademarks and effective protection of trademark rights. The following table summarizes and categorizes several important aspects:

Firstly, the official languages of India are English and Hindi. Therefore, when submitting a trademark registration application in India, it is possible to submit an application in English or Hindi. Trademarks in other languages also require transliteration and translation in English, including Chinese trademarks. Secondly, India's legal system belongs to the Anglo American legal system. Therefore, in relevant cases such as dismissal, objection, litigation, etc., examiners/judges can accept prior cases as examples, which can be said to be a very effective way. Thirdly, the Indian Patent, Design and Trademark Office has established four sub bureaus to share the pressure of the office and facilitate applicants. That is, based on the applicant or trademark agent's main place of business, the digitization of trademark registration applications is completed by corresponding institutions in each region. However, the examination of whether to register is centralized at the Mumbai headquarters.

2、 The process of applying for trademark registration in India (from the official website of the Indian General Administration) https://ipindia.gov.in/workflow-chart.htm ）

From the above official website diagram, it can be seen that the trademark registration application process in India is quite similar to that in China, which means that trademarks need to go through formal and substantive examinations before being announced. Therefore, we will specifically focus on the substantive examination of trademark applications in India, and divide the examination into absolute and relative reasons one by one, accompanied by case analysis.

3、 Substantive examination of trademark application - absolute reasons

Article 9 of the Indian Trademark Law of 1999 provides detailed provisions on absolute grounds. The following is a list of the details of this article for your reference. It can be mainly summarized as follows: (1) those lacking significance shall not be registered; (2) Deceiving the public or causing confusion shall not be registered as a trademark; (3) Words that offend a certain social class or are sensitive to religion shall not be registered; (4) Content prohibited by other laws cannot be registered. However, there is also a clause in the law regarding trademarks that lack distinctiveness, which states that those that have gained significant features through extensive and continuous use can be registered.

Indian official website regulations（ https://ipindia.gov.in/writereaddata/Portal/ev/TM-ACT-1999.html#s9 ）

So, how is a Chinese trademark examined in India? Firstly, Chinese trademarks are examined as graphics in Indian registration applications; According to the 1999 Trademark Law of India, trademarks that are not in English or Hindi are required to provide English translation and transliteration. Therefore, Chinese trademarks need to provide both English translation and transliteration when submitting registration applications in India. In the following table, the trademark "Zhizheng" No. 4913296 in Class 9, 35, and 42 of the case is presented. The table only extracts key information for readers to compare and analyze. For detailed information, please refer to the official website of India。（https://ipindia.gov.in/trade-marks.htm ）。

Trademark   1
Trademark   application number	4913296
category	9,35,42
filing   date	19/03/2021
Application	e-Filing
Trademark   transliteration	Chinese Characters (“Zhi”; “Zheng”)
Trademark   type	DEVICE
state	Registered
Reviewer   reviews decision

Of course, we have also seen some earlier trademark applications that did not submit detailed English transliteration and translation, but only stated that the trademark was "Chinese characters". In this case, the examiner can only search on their own and determine whether the trademark has distinctiveness based on the results they found. Often, due to language barriers, the trademark application is rejected on the grounds of lack of distinctiveness, allowing the applicant to further analyze and demonstrate the transliteration and meaning of the trademark. Therefore, to reduce unnecessary rejections, it is recommended that the applicant indicate accurate trademark transliteration and English translation when submitting the application.

Of course, if a trademark is rejected due to lack of distinctiveness, there is no need to worry too much. As mentioned earlier, India is a common law country that accepts prior precedents. Therefore, due to the lack of distinctiveness in rejection, as evidenced by prior cases, the probability of obtaining the initial trial through rejection is much higher than in China, and local lawyers do not need to argue extensively like Chinese lawyers. Below are examples of situations lacking significance:

Trademark   2
Trademark   application number	4939017
category	33
filing   date	09/04/2021
Application	e-Filing
Trademark   transliteration	Chinese Characters QING HUA FEN JIU
TM   Category	TRADE MARK
Trademark   type	DEVICE
state	Registered after refusal appeal （驳回复审后获得注册）
The   original text of the examiner's review decision	Gentlemen/Madam, The above mentioned application has been   examined under the provisions of Trade MarkAct,1999 and Trade Mark Rules,2017   and the trade mark applied for is open to objection under the following   sections: 1. The objection is raised under S 9(1) (a) of the Trade Marks Act 1999, as   the mark is non-distinctive and as   such it is not capable of   distinguishing the goods of one person from those of others. Hence, the above application is liable to   be refused. Accordingly, you are requested to submit your   response/submissions, if any, along-with supporting documents, within One   Month from the date of receipt of this Examination Report or you may apply   for a hearing. Please Note that if no reply is received or   a request for a hearing is applied for within the above mentioned stipulated   time, the said application shall be treated to have been abandoned for lack   of prosecution under Section 132 of the Trade Marks Act, 1999 and thereafter   the status of application in the computer database shall reflect the factual   position.

According to the original decision of the examiner, it can be seen that the reason for the rejection of the trademark is the lack of distinctiveness in point (a) of the first paragraph of Article 9 of the 1999 Trademark Law, which makes it impossible to distinguish the source of the designated goods. Through analysis and comparison, due to the presence of the word "liquor" in the trademark, which is translated as "liquor" in English and designated for use on Class 33 goods, the examiner deemed it lacking distinctiveness and therefore rejected the registration application for the trademark. The Indian lawyer mainly discussed the following points in the rebuttal review, and ultimately, the trademark obtained registration on the designated goods through re examination.

1) Detailed explanation of the translation and transliteration of the applied trademark, transliterated as "QING HUA FEN JIU"; The English translation is "GREEN; FLOOR; RIVER IN CHINA; LIQUOR"; The trademark as a whole has no meaning;

2) The trademark itself has inherent distinctiveness and can distinguish the source of specified goods;

3) Provide examples from previous cases to illustrate.

The applicant's interpretation of the trademark in this case is a single word word for word translation, and it is explained that the overall meaning is meaningless. The key is to provide prior precedents to convince the examiner. Sometimes, the vastness and profundity of Chinese characters can give one character many meanings, and some trademarks may provide multiple English translations. For example, the "Meng" character of the "Mengniu" trademark in classes 5, 29, 30, 32, and 35 of No. 5196707 was submitted as "MONGOLIA, SUFFER, COVER" in the application, and "Niu" was naturally translated as "COW", successfully passing the examination and obtaining registration. It can be seen that choosing the English translation corresponding to Chinese is one of the key factors in trademark application.

Generally speaking, it is recommended that applicants provide accurate English transliteration and translation when submitting their applications, rather than simply stating that the trademark has no meaning, as this can easily lead to the trademark being rejected due to lack of distinctiveness; If the trademark as a whole has no meaning, it is recommended to translate each Chinese character word for word and explain that the entire trademark has no meaning; Secondly, it is recommended that the applicant only submit one English translation that corresponds to the meaning of the trademark. If multiple translations are provided, it may lead to the rejection of similar trademarks cited earlier. Let's take a look at the relative reasons for trademark application examination in India.

4、 Substantive examination of trademark application - absolute reasons

Article 11 of the Indian Trademark Law of 1999 is about the relative grounds for examination of trademark applications, which can be mainly summarized as: 1) being identical or similar to a prior trademark; 2) Registering a trademark on dissimilar goods/services that is identical to the prior well-known trademark and may cause damage to the prior trademark; 3) Infringement of prior copyright and other rights. Due to the large length of Article 11, it will not be presented here. Readers can refer to the following link for detailed information. Indian official website regulations（ https://ipindia.gov.in/writereaddata/Portal/ev/TM-ACT-1999.html#s9 ）.

The following is a case where a trademark application was rejected due to lack of distinctiveness and citing multiple non similar trademarks, only stating that the trademark is in Chinese characters and has no meaning. The final registration was obtained through rejection review:

trademark
Application   Number	2864776
category	3
filing   date	17/12/2014
Application	e-Filing
Trademark   transliteration	Chinese Characters (LO YA)
Trademark   type	DEVICE
state	Registered after refusal appeal 经驳回复审获得注册
The   original text of the examiner's review decision	Gentlemen/Madam, The above mentioned application has been   examined under the provisions of Trade Mark Act,1999and Trade Mark Rules,2017   and the trade mark applied for is open to objection under the following   sections : 1. The objection is raised under S 9(1) (a) of the Trade   Marks Act 1999, as the mark is a common and as such it is not capable of   distinguishing the goods of one person from those of others shall not be   registered. 2. The Trade Mark application is open to   objection on relative grounds of refusal under Section 11 of the Act because the same/similar   trade mark(s) is/are already on record of the register for the same or   similar goods/services. The detail of same/similar trade marks is enclosed   herewith. The objection is raised under S 11 (1) of   the Trade Marks Act, 1999, as the mark is identical with or similar to   earlier marks in respect of identical or similar description of goods shall   not be registered and because of such identity or similarity there exists a   likelihood of confusion on the part of the public. Hence, the above application is liable to   be refused. Accordingly, you are requested to …… 6   Earlier trademarks: “”No. 741465, “” No., 1278910, “” No. 1278912,   “” No. 1278915, “” No. 1278916,   “” No. 2243795
Key   points of rebuttal and review	1) The trademark   application itself has inherent distinctiveness, transliterated as "LO   YA", and the overall meaning of the trademark application is   meaningless; 2) Five prior   precedents are listed in the reasons for argumentation; 3) The cited   trademarks No. 1278912, No. 1278915, and No. 1278916 are invalid due to the   lack of renewal and no longer constitute obstacles to the registration of the   applied trademark; 4) The cited   trademark number 2243795 is invalid due to the applicant's abandonment of the   application; 5) The other two   valid trademarks, the transliteration of trademark "" is "SEKKISEI", and   the transliteration of trademark "" is "ZHI CAO". The   appearance, structure, and pronunciation of the applied trademark and the   second cited trademark are different and will not cause confusion.

From the above case analysis, it can be concluded that 1) Chinese trademarks submitted in India can easily be rejected due to lack of distinctiveness or citation of prior trademarks if they are only stated as having no overall meaning; 2) Even if rejected, registration can still be obtained through re examination; 3) In the examination of Chinese trademark applications in India, transliteration is also a crucial factor. For example, in this case, the cited trademark "Xuejijing" is transliterated as "SEKKISEI" instead of "XUE JI JING". One of the reasons is that the brand is a Japanese brand, and its transliteration is based on its pronunciation in Japanese; On the other hand, this transliteration annotation is not easily blocked or rejected by other Chinese brands with similar pronunciation.

In summary, when Chinese companies apply for registration of Chinese trademarks in India, they mainly examine three elements:

1) Overall appearance. As Chinese trademarks are registered as graphic trademarks in India, the overall appearance is one of the examination elements.

2) The English transliteration of the trademark.

3) Translation of the trademark in English.

Based on the above analysis, we suggest that when applying for registration of a Chinese trademark in India, it is essential to conduct pre application research; Secondly, providing accurate English transliteration and translation when submitting an application can reduce the likelihood of trademark rejection; Finally, when faced with rejection, whether it is due to absolute or relative reasons, it is recommended to actively respond, as the chances of passing the re examination are relatively high.