Can the god of wealth be registered as a trade mark, and why?

Several cultures have gods or goddesses of wealth, for example Pluto and Fortuna (Roman), Lakshmi (Hindu), Renenet (Egyptian), and Teutates (Celtic). The Chinese god of wealth is Caishen (财神).   

To some extent, Caishen is the Chinese version of Santa Claus, because, like him, he is a generous, jolly man in red who dishes out good stuff (in the form of luck and prosperity) and is tremendously loved by billions of people. He is normally depicted wearing a traditional civil official’s red robe and a minister’s hat and carrying auspicious objects such as gold ingots, a ruyi sceptre, or scrolls with propitious words. 

Ancient Caishen, cartoon Caishen, and... miaow💰

Last month, an interesting case related to Caishen was heard by the Beijing IP Court: can Caishen be registered as a trade mark?* 

Background 

On 3 May 2017, the applicant, Societe Des Produits Nestle S.A. (Nestle) filed a trade mark application (No 23913607) with the China Trade Mark Office. As shown below, the sign is a jolly man holding a gold ingot with the words 添旺 (adding prosperity) on it. The Trade Mark Review and Adjudication Board (TRAB), which was terminated on 18 February 2019 by means of Notice No 295 of the National IP Administration due to institutional integration, rejected the application as the sign, namely the figure of Caishen the folk deity, involved feudal superstition and thus fell within the scope of ‘other adverse effect’, which is prohibited by Article 10.1.8 of China’s Trade Mark Law (2014). 

In response to this, Nestle filed an administrative lawsuit before the Beijing IP Court (the court), claiming that there was no direct connection between Caishen and the trade mark applied for and that, even if there was, it would not have an adverse effect on society. 

The court’s decision 

The court affirmed the rejection of the trade mark application, though on different grounds. 

No adverse effect 

First, the court opined that the sign at issue contained enough features to be perceived as Caishen the Chinese god of wealth, eg, including: the hat with the ancient copper coins, the gold ingots in his hand, and the manifest wealth-related wish of adding prosperity -- a direct resemblance was certain. 

Nestle's trade mark application

Second, the court pointed out that traditional culture did not equate to feudal superstition. The reasons why Chinese devotees worship Caishen were more because of a positive longing for a happy and prosperous life. The court further clarified that the purpose of Article 10.1.8 of China’s Trade Mark Law (2014) is to prevent the uses of signs that would be detrimental to public interest and public order or to universally accepted morals and ethical norms. 

In other words, adverse effect merely refers to signs that could have a negative impact on China’s political, economic, cultural, religious, ethical, or other public interests and public order. 

In summary, TRAB’s classification of the sign at issue as feudal superstition was overly harsh; thus, the court corrected this part of TRAB’s decision. 

Lack of distinctiveness 

As our learned readers might have guessed by now, the trade mark application would not be approved anyway as it would be contrary to Article 11.1.3 of China’s Trade Mark Law (2014), which relates to distinctiveness. And this is what actually happened. Even with the supplementary evidence, the court still found that the sign at issue failed to fulfil the basic function of a trade mark, which is to identify the commercial origin of goods and services: 

Caishen has already been integrated into the life of the Chinese for a long time and has become a key symbol of the representation and the inheritance of the Chinese traditional culture. 

In conclusion, the court dismissed Nestle’s claims and upheld TRAB’s decision to reject the trade mark application in discussion. 

Comment 

Article 10 of the China’s Trade Mark Law (2014) stipulates the absolute grounds for the refusal of registration of a sign as a trade mark. These silver bullets are deserving of attention because they can be used by any person as the reason for filing a request of trade mark invalidation or opposition and they are not subject to the five-year limitation period normally imposed on such requests. 

Furthermore, it is worth noting that when it comes to trade mark applications, China seems to adopt a relatively high social-morality standard. For instance, all the trade mark applications below have been rejected in China due to adverse effects: 

吃货一条街 (foodie street)      

鸭店 (duck shop) 

吃你豆腐 (eat your tofu) 

妖精 (goblin) 

UBER 

* The exact case number will be added once the full decision is published.