'Going down' is a trade mark that causes a bad influence on morality, says the Beijng High Court in China

‘Going down’ is a common English phrase whose literal meaning is descending or sinking (but it might also mean something else ...). When an attempt was made to register it as a trade mark for some sex-related products in China, it faced the issue of whether such a phrase would lead to a bad influence on morality.

Similar to Article 7(1)(f) EUTMR, Article 10 (8) of the PRC trade mark law prevents a mark from registering if it is harmful to socialism morality or has other bad influence.

In its recent decision (here, in Chinese), the Beijing High Court affirmed that ‘going down’ is a trade mark that causes bad social influence when it is designated for sex-related products. 

Facts 

In March 2017, a company filed a trade mark application ‘going down’ for goods including vaginal syringes, biodegradable bone fixation implants, dentures, dental apparatus and instruments, condoms, non-chemical contraceptives, sex dolls, artificial surgical implants, electric dental apparatus as well as medical apparatus and devices.

The trade mark information is presented as follows:

The trade mark office of the PRC refused the application because it found that the pronunciation of ‘going down’ is identical to that of Chinese words ‘够淫荡’ (pronounced as ‘Gou Yin Dang’ and translated into English is ‘enough to be lascivious’). This sexual implication of the trade mark harms Socialism morality and causes negative social influence. As a result, it should not be registered in accordance with Article 10 (8) of the PRC trade mark law.

1st Instance

The applicant appealed to the Beijing IP Court. Not siding with the trade mark office, the Court held that ‘going down’ is a regularly used phrase whose meaning is ‘descending or sinking’. The English words themselves have no immoral meaning, and the relevant public will not generally relate ‘going down’ to ‘够淫荡’. Thus, the use of the sign for the designated goods would not cause bad influence. Such a trade mark could be thus registered.

2nd Instance 

Unsatisfied with the judgment of the Beijing IP Court, the Trade Mark Office appealed to the Beijing High Court. The Court sided with the Office and held that 'going down' is a trade mark that causes bad influence. The Courts reasoned as follows:

1.What is a trade mark that causes bad influence?

A sign could be held to be a trade mark resulting in bad influence if it causes or its constituent element(s) cause a negative influence on public interests and public order. The term ‘other bad influence’ in Article10 (8) of the trade mark law is used to refine an absolute ground to refuse the registration of a trade mark. The ‘other bad influence’ shall not be interpreted in an unduly broad way to restrict the freedom of expression and creativity. Nor shall it be interpreted in an unduly narrow way to allow the registration of a trade mark which has a negative effect on political, economic, cultural, religious and ethical public interests and orders.

2.Does 'going down' have an immoral meaning?

The words ‘going down’ (phonetically) have immoral, negative and low-taste meaning when it is used for the designated goods such as vaginal syringes, condoms, non-chemical contraceptives and sex dolls, although the literal meaning of these words is ‘descending or sinking’. The Trade Mark Office’s decision should be upheld for the purpose of leading the public to build a positive mainstream culture and value; of prohibiting the act of meeting the ‘three forms of vulgarity’ (inelegant, indecent, and insipid) in a way of ‘play edge ball’; and of realizing the judiciary’s duty to preserve and pass on mainstream awareness and value.

3. Is 'going down' causing bad influence?

A trade mark is a commercial sign attached to products aimed at the public. In addition to distinguishing goods and services from others and bearing reputation, a trade mark can also disseminate value and culture. A trade mark's influential power and contact in the public are wide and uncertain. The cultural taste and the value represented by a trade mark would be widely disseminated through the use.

The trade mark 'going down' is designated for the goods such as vaginal syringes, condoms, non-chemical contraceptives and sex dolls. The applicant uses the vulgar implication of the trade mark as a marketing gimmick to attract public attention. Such an act causes bad influence on the public order, business culture and morality.

Based on the above reasoning, the Court decides that the trade mark should not be registered.

Comment

For those who speak English, it may occur in their mind that ‘going down’ could be understood as a word related to sexual context which could have immoral meaning in China. So are some of the Chinese who speak English like this Kat. This Kat had no idea that ‘going down’ would link to the ‘够淫荡’until reading the judgment.

In one post (here in Chinese), Judge Bo Yuan (not the judge in this case but a famous IP judge in Shanghai) tried to trace the origins of the link between ‘going down’ and ‘够淫荡’. He found that such a link or imagination may derive from a popular story that spred over the Internet. This story concerns a conversation that takes place in a lift between a man and a woman on whom he has a crash. In their conversation, the man understands the ‘going down’ as ‘够淫荡’ and reckons that the ‘going down’ said by the woman contains a strong sexual hint. Based on this finding, Judge Yuan thinks that the link between ‘going down’ and ‘够淫荡’is established within a specific context such as flirting or sex. Following this argument, it is clear that the link between 'going down' and '够淫荡' is set when the sex-related products imply or relate to a sexual context. Judge Yuan's argument is reasonable and acceptable. His argument assumes that the general public would know the link, and such a link is recalled when they see the trade mark. But in this case, this assumption may not be so solid because it is not sufficiently proved that the general public or at least a majority of the public knows the link or at least hear the story. And this leads to the different holdings between the Beijing High Court and the Beijing IP Court.

In addition, the decision of the Beijing High Court briefly states that the freedom of expression and creation may play a role in trade mark law. In this case, it relates to the assessment of whether a trade mark could cause bad influence. This statement echoes the recent decision of the Supreme Court of the US in Lancu v. Brunetti (here) and the opinion of the AG Bobek in Constantin Film Produktion v. EUIPO (here). Both cases address the interplay between freedom of expression and creation and a trade mark consisting of immoral elements or words. The US Court directly held that prohibiting registration of a trademark consisting of or comprising immoral or scandalous would violate the First Amendment (free speech clause). In the EU case, AG Bobek held that the freedom of expression as a fundamental right does play in the field of the trade mark. It is still waiting for the decision of the CJEU on the EU's position on the freedom of expression and trade mark law. But the topic itself would definitely catch more attention.

Lastly, it is also worth to mention that the Beijing High Court recognized a potential new function of a trade mark, namely, disseminating culture and values. As argued by the Court, with the distribution of goods attaching a trade mark, the culture and value represented by a trade mark could be also disseminated. If a trade mark disseminates a low-taste or inferior culture, it shall harm the society or public morality. This idea is to some extent reasonable and acceptable in this case. But how to use this function in trade mark cases may need to be explored. Just one guess. When a trade mark disseminates a positive culture and value such as  Nike’s ‘Just do it’ or MacDonald’s ‘I’m lovin it’, shall this trade mark be more appealing to the trade mark office or the court? And further, it may enjoy better protection?