When foreign geographical names meet the domestic public – HMPTN WATER v CNIPA

Art. 10.2 of the PRC Trade Mark Law (TML, 2019 Amendment) concerns a ground for refusal against foreign geographical names:

No geographical names of administrative divisions at or above the county level or foreign geographical names known to the public may be used as trade marks, except where geographical names have other meanings or constitute part of a collective trade mark or certification trade mark. Registered trade marks in which geographical names are sued shall remain valid. (Emphasis added)

For interested applicants, the provision on foreign geographical names per se gives two ways out (putting aside the aspects of a collective or certification trade mark regulated by specific legislation that protects them): to prove that a sign is unknown to the relevant public only to the extent that it does not work as a geographical name, as it is incapable of directing to a single place sufficiently definite to the relevant public. Conversely, a sign that has additional meaning(s) does not constitute a mere geographical name. The strong ‘additional meanings’, or the acquired distinctiveness, take the sign out of the shadows of being a descriptive term and make it eligible for trade mark registration.

Earlier this month, a case ruled by Beijing Higher People’s Court demonstrated the respective ways-out. [Case references: (2021) Beijing 73 Administrative First Instance No 18488; (2022) Beijing Administrative Final Instance No 2884]

Background:

On 26 December 2019, HMPTN WATER LLC, an American company, filed a trade mark application in China for the sign shown below (no 43349958 in class 33 for wines). On 26 January 2021, China National Intellectual Property Administration (CNIPA) rejected the application in accordance with Art. 10.2 of the TML.

HMPTN WATER LLC lodged a lawsuit before the Beijing IP Court against the CNIPA’s unfavorable decision and submitted evidence aiming to show that:

  (1) ‘HAMPTON’ is used in many foreign cities, villages or street names, rendering it too vague to be a definite and known geographical name;

  (2) ‘HAMPTON’ is also a surname;

  (3) Similar signs have been approved for registration in China and abroad.

Upon submission of evidence, the Beijing IP Court upheld ‘HAMPTON’ as a common English surname and stipulated that, globally, many cities or villages are named ‘HAMPTON’ or that it forms part of their name. In China, however, none of the place is known to the relevant public, making ‘HAMPTON’ as a surname much more significant than a mere geographical name.

Furthermore, the Court pointed out that the combined words ‘HAMPTON WATER’ on wine products, as a whole, does primarily not have a geographical connotation any longer. Therefore, it being allowed as a trade mark would not exclude the rightful use of ‘HAMPTON’ by the said multiple cities and villages. And per this ‘one-to-many correspondence’, the relevant public will not interpret ‘HAMPTON’ as designating the geographical origin of goods or services.

In view of the above, the Court identified the sign’s overall distinctiveness and corrected the CNIPA’s decision.

The CNIPA appealed to the Beijing Higher People’s Court, mainly arguing that the Chinese translation of ‘HAMPTON’, ‘汉普顿’, is a known foreign geographical name without other significant meanings. However, due to the absence of supporting evidence of such argument, and considering the fact that the disputed sign contained another element, i.e., ‘WATER’, the Court held that the relevant public in China would not directly consider the disputed sign to be a foreign geographical name. Therefore, the Court found no breach of Art. 10.2 of the TML and dismissed the CNIPA’s appeal.

Comment:

Apart from the two ways-out, this case also shows that an English term having a sole and direct Chinese corresponding translation does not necessarily represent a geographical name. The core test lies in the distinctiveness of the geographical name. Below are several examples of rejected trade mark applications given by the Guidelines for Trade Mark Examination and Trial (on the introduction of this Guidelines, see an IPKat post here):