Legal attributes of deceptive marks in China’s Trademark Law

Article 6 of the Paris Convention for the Protection of Industrial Property says trademarks covered by this article may be neither denied registration nor invalidated, with a number of exceptions including the following: “when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public.”

In trademark examination in China, the China Trademark Office and China Trademark Review and Adjudication Board (TRAB) frequently refuse a mark by concluding that it deceptively describes the character of the goods so as to cause “consumer misunderstanding and from that a mis-purchase”, which is defined as one of the so-called “adverse effects”.

The applicable law is article 10.1(8) of the Trademark Law, which provides that “those detrimental to social morality and custom or having other adverse effects [shall not be used as a trademark]”. The TRAB, in issue 2 of its 2012 Legal Newsletter, explained: “the fundamental function of a trademark is to ‘label products to distinguish from others’ so that market entities can compete fairly and effectively.

Damien Wang is a senior associate and client manager, and Si Jiamu is a trainee at Chang Tsi & Partners