What is the distinctiveness of a trademark, and how to judge whether a trademark has distinctiveness?

Hello, distinctiveness refers to an attribute of a trademark, which marks the source of an enterprise's goods or services and distinguishes it from those of other enterprises. Trademark distinctiveness, as the "soul" of trademark protection and the "hub" of the normal operation of trademark law, has always been paid special attention by theoretical and practical circles.

Identification method

"The meaning of a trademark is generally relative to the specified goods and services. This truth is self-evident. " To judge whether a logo is significant, we should not do it in the abstract, but should consider the goods or services it intends to attach. The concept or meaning of a sign cannot be directly related to the marked object, that is, goods or services, or has only a small or indirect connection. At the same time, the main body to judge whether a trademark is remarkable is not the examiner or judge of the Trademark Office, but the ordinary consumers in the relevant market. It is of great significance when ordinary consumers identify a logo as a trademark in their daily shopping. Ordinary consumers usually look at the logo as a whole, rather than looking at the details of the logo. He or she has reasonable relevant knowledge and reasonable degree of care, and the degree of care will change with the type of goods or services. As the product of the development of commodity economy, the trademark system depends entirely on the specific market, and the background of trademark use determines everything.

There is a degree of distinctiveness, and any mark that meets the minimum requirements of distinctiveness, that is, it has inherent distinctiveness, can be registered as a trademark. In fact, the prominence of trademarks often far exceeds this standard. Therefore, generally speaking, as long as a sign has no obvious defects, its meaning can be inferred. In practice, "reduction to absurdity is generally used to judge the distinctiveness of trademarks, that is, some marks that cannot be used as trademarks or registered as trademarks are excluded." From the legislative point of view, most of the provisions on distinctiveness in trademark laws of various countries belong to prohibitive clauses, that is, those unqualified marks are directly excluded from trademark protection. As far as academic research is concerned, "it is not easy to clearly define the composition of a distinctive trademark from the front, but to analyze it from the back, which will be more helpful to determine whether a trademark has distinctive elements." Meaning is dynamic. An inconspicuous mark may be remarkable because of long-term use. On the contrary, a distinctive sign will lose its meaning because of improper use. This involves the issue of obtaining salience.

In practice, this misunderstanding often occurs. Words not used by competitors are often significant, while words commonly used by competitive enterprises cannot be significant. But this is not the case. First of all, the fact that competitors don't use a word doesn't affect its description or distinctive attributes. For example, there is a sphygmomanometer that can be worn on your wrist like a watch. When Panasonic applied to register the "blood pressure meter" as the trademark of sphygmomanometer, it pointed out that no competitive enterprise used the trademark of "blood pressure meter", so the word was of great significance. However, the examiner of the Coordination Bureau and the Appeal Board finally rejected the application. Competing enterprises do not use a word, which is only related to judging whether the word belongs to a common name. But it has no effect on the judgment of inherent meaning. Secondly, the fact that competing companies are also using a word is not enough to overturn its meaning. It has been pointed out that "mail" is very common in the names of many newspapers, and the word is not unique to the trademark owner, so the trademark "THE MAIL" is not enough to distinguish its owner's newspaper from other newspapers. However, this argument was eventually rejected on the grounds that uniqueness itself is not a prerequisite for salience.

In a word, whether a trademark is significant or not should be judged according to the specific circumstances of the case, and there is no universal iron law.

The strength of trademark distinctiveness and its difference significance

The distinguishing theory of trademark distinctiveness originated from America. According to the difference of inherent distinctiveness (identifiability) of trademarks, this theory distinguishes strong trademarks from weak trademarks. Only strong trademarks can be registered in the federal register, that is, only when the trademark itself is remarkable or the trademark owner proves that its trademark has acquired secondary meaning can the trademark be registered in the main register. Strong trademarks include imaginary trademarks, arbitrary trademarks and implied trademarks. In word mark, for example, the so-called fictitious trademark means that the words or letter combinations that constitute the trademark have no meaning in the dictionary. For example, "Exxon" (the trademark of Standard Oil Company) itself does not describe anything and has no meaning. However, not all trademarks composed of self-made words belong to fictional trademarks, and some words make consumers realize a certain meaning in their composition and pronunciation. For example, the trademark "Breads Preped [SiC]] used on" jam and jelly "will make consumers think that it constitutes a description of the quality characteristics of the goods used, that is, jam can be coated on bread, so the trademark is not a fictitious trademark. The so-called arbitrary trademark refers to the word or combination of words that constitute a trademark, which has a fixed meaning in the dictionary, but has nothing to do with its designated goods or services. For example, "Yahoo!" Used in the trademark of "Internet search engine" [Author's Note: Yahoo is one of the famous websites familiar to consumers in China, which means humanoid beast; Yahoo, after that, refers to a hateful person with the habit of being an animal, a person with a human face and an animal heart. Black &; A "white" (black and white) trademark used on "Scottish alcoholic beverages". The so-called suggestive trademark refers to a trademark that has an innuendo or suggestive effect on the nature or quality of the goods it uses. For example, the trademark Roach Motel implies but does not directly describe the function of using the commodity "insect trap": the trademark "Rain Dance" does not directly describe the function of using the commodity "car wax", but implies the function that "wax will keep rain away from cars". The common forms of weak trademarks are descriptive trademarks, geographical trademarks and family names. The so-called descriptive trademark refers to a trademark that only describes the functions, quality, composition and other characteristics of the goods it uses. For example, the "Vision Center" only describes the places where you can buy glasses. The so-called geographical name trademark refers to a trademark that describes the origin of goods or services. For example, the "San Francisco Bay Club" describes that the health club is located near San Francisco Bay. In order to obtain federal registration and prohibit others from using it, the owner of the trademark must prove that consumers can distinguish the club from other clubs located near San Francisco Bay through the trademark. A surname trademark is a trademark with a common surname, such as the "Newman Own" trademark used in salad dressing. For this kind of trademark, the US Patent Office will not approve the registration unless the applicant can prove that the trademark has acquired a second meaning through use. The reason is that many people may use the same surname at the same time, and letting one person enjoy the trademark right of the surname will bring unfair consequences to others. Strong trademarks and weak trademarks are the division of theoretical circles. Examiners of the United States Patent Office (PTO) do not use this term in trademark examination, but use terms such as "inherent distinctiveness" and "merely descriptive" as stipulated in the American trademark law. This classification is based on the relationship between a trademark and the goods or services it uses. It holds that all trademarks that can be recognized by itself belong to strong trademarks, while trademarks that can not be recognized by themselves and can only be registered by using the second meaning belong to weak trademarks, which solves the problem of trademark registrability well and is worth learning.

China's Trademark Law does not distinguish the strength of trademark distinctiveness, but the expression of "trademark originality" appears in administrative regulations [see Article 1 1 of the repealed Interim Provisions on the Recognition and Administration of Well-known Trademarks]. As a legal vocabulary, "originality" is the requirement of copyright law for works, that is, works protected by copyright law must be original. "Significantness" is the requirement of trademark law that a trademark can be used for trademark registration, that is, the trademark applied for registration should have distinctive features and be easy to identify. Therefore, it is more appropriate to use the expression of "trademark distinctiveness" in trademark legislation. Article 1 1 of the current Provisions on the Recognition and Protection of Well-known Trademarks is amended as "distinctiveness". The distinctiveness of trademarks can be further divided into two levels. One is the inherent distinctiveness of the trademark logo itself, that is, the distinctiveness of the combination or expression of trademark words, graphics, graphics and words, and the distinctiveness of the three-dimensional trademark structure. The second is the distinctiveness obtained through use, that is, the distinctiveness of trademarks is improved by the improvement of brand awareness. "The originality of a trademark" refers to the distinctiveness of a trademark in the first sense, and a trademark with distinctiveness is not necessarily original. For example, the "Great Wall" trademark used for wine is remarkable but not original, while the "Haier" trademark used for refrigerator is remarkable and original.

Comparison of trademark distinctiveness with creativity and originality

American scholars once pointed out: "Significance is to trademarks what novelty is to patents and originality is to works." This statement is very accurate only in terms of emphasizing the importance of meaning. However, under the condition of patent authorization, it is not novelty but creativity that is truly qualified to compare with trademark distinctiveness. Novelty only requires patented technology that is not available in the existing technology, and creativity goes further, and the requirements are not obvious. For example, the European Patent Convention stipulates: "If the existing technology is taken into account, an invention is not obvious to the professional technicians and should be considered as a creative invention." The "originality" in the copyright law means that the work is independently completed by the author, rather than copying any other work. According to the interpretation of the American court, independent completion means "the work contains something unique, even in handwriting, which can show its uniqueness." In a very low-level work of art, there are irreversible things, which are done independently. "In other words, the work must have a minimum of creativity. Although the specific requirements of creativity or originality vary greatly from country to country due to the differences in historical culture or technological development level, as far as creativity or originality is concerned, it is basically the same in all countries of the world as a prerequisite for patent authorization or copyright protection.

Creativity or originality is a requirement for the patented technology or the work itself, but as mentioned above, distinctiveness has no substantive requirement for trademarks. The "administrative court" of Taiwan Province Province has repeatedly explained that "particularly remarkable" means distinctiveness, which may be beneficial to our correct understanding of distinctiveness: "The so-called particularly remarkable means that the trademark itself is special and can be distinguished from other people's goods." "Special cloud means that the trademark itself is special; Zhuo Yueyun refers to those who can distinguish from other people's goods. " "The so-called' special' means that the trademark itself is unique and can attract the attention of ordinary consumers; The so-called' significant' refers to the relationship between its appearance, title and concept and its designated use of goods, which is enough to distinguish it from other people's goods, that is, people who have the adaptability of commodity trademark recognition. " The above explanation only requires the trademark to be "special", "different from others' trademarks" and "able to attract consumers' attention", but there is actually no threshold. Of course, in practice, simplicity, eye-catching and easy to remember are conducive to improving the distinctiveness of trademarks, and these characteristics are helpful for customers who are satisfied with the brand to buy again. However, plainness, lack of originality or imagination do not constitute evidence that a trademark lacks distinctiveness.

However, in practice, trademark authorities in various countries sometimes deviate from the correct standard of distinctiveness and reject the application for trademark registration of enterprises on the grounds of lack of originality or creativity. For example, the Appeal Board of the European Union Internal Market Coordination Bureau once rejected the application to register the "MULTI 2'NI" logo as a trademark of various tools and accessories, on the grounds that the applicant did not show any imagination in the combination of these common words, so it seemed unremarkable. Similarly, even after admitting that the trademark does not need to be original or reflect the designer's imagination, the European Court of First Instance ruled that the symbol "movie action" is not significant for a series of services (including movie screening and rental business). In another case, the EU Internal Market Coordination Bureau rejected the application for registering the commercial slogan "Beauty is not young but decent" as a trademark, and the Appeal Committee sent it back for retrial, pointing out: "The slogan is not bland, but a statement that conforms to the' philosophy of beauty'. "It is not difficult to see that the Coordination Bureau's understanding of trademark distinctiveness is biased, and the reasons given by the Appeal Board for remanding are not appropriate, because blandness is not a fatal flaw for trademark registration. However, a French court has a deeper understanding of distinctiveness and clearly pointed out that trademark rights are not based on creation. In fact, the lack of originality or creativity is not a trademark defect at all.

Internal meaning and acquired meaning

Inherent salience and acquired salience are the most important concepts in traditional theory, but recently some scholars have clearly pointed out: "Inherent salience and acquired salience bring more confusion than they solve problems." This conclusion may be biased, but it is by no means groundless. Let's make a brief analysis here, and discuss it in detail in another article.

According to the qualified degree of trademark protection, traditional theories divide various signs into five types: (1) generic names, (2) descriptive words, (3) suggestive words, (4) random words and (5) inventive words. Among them, suggestive, random and imaginative words are inherently significant, while descriptive words and generic names are too closely related to the marked goods. There is no intrinsic meaning. The so-called inherent distinctiveness means that the trademark mark cannot be reasonably understood as the description or decoration of the goods to which it is attached, and consumers will automatically regard the mark as the indication of the origin of the goods, so it can be directly registered as a trademark. For example, Haier refrigerator, Apple computer and Jianlibao beverage belong to fabricated, random and implied trademarks respectively. However, directly describe the nature, source, composition, etc. A product or logo that can reasonably be regarded as product decoration is not obvious and may not be registered as a trademark. Among them, if descriptive or decorative signs are recognized by consumers after long-term use, they will have the second meaning or secondary meaning to indicate the origin of products, and then obtain the salience required by the Trademark Law. Traditional theory is also called "prominent fiction". Such as Wuliangye liquor, two-sided needle toothpaste, Tsingtao beer, etc.

In fact, "from the perspective of modern linguistics, no meaning can be inherent in words, and the meaning of words can only be the product of social communication." As a commodity language, trademarks are no exception. Without a natural trademark, even if a trademark with inherent distinctiveness is registered or used at the beginning, it is impossible for consumers to automatically identify it as a trademark immediately. The distinctiveness of trademarks can only be truly obtained through commodity marketing or advertising. In this sense, a trademark cannot be born with distinctiveness, and distinctiveness can only be acquired the day after tomorrow.

At the same time, it must be noted that the inherent salience only describes the relationship between a sign and its marked object from a negative or negative aspect. Logically speaking, the definition cannot be negative. In fact, it is not a sufficient condition or even a necessary condition for symbols to play their marking and distinguishing roles, because descriptive words with no inherent meaning can also play their marking and distinguishing roles after obtaining the second meaning. Therefore, the so-called inherent distinctiveness can only be regarded as a favorable condition for a trademark to obtain distinctiveness at most. Obtaining distinctiveness is real distinctiveness, not fiction, and it is acquiring distinctiveness that determines the strength of a trademark.

There are many discussions on the above viewpoints in foreign legal documents. The Restatement of the American Anti-Unfair Competition Law emphasizes that the inherent distinctiveness of a trademark "is not decisive for the strength of a trademark, because the strength of a trademark ultimately depends on the degree to which potential consumers associate the trademark with a specific source." Some judicial opinions also show a similar tendency: "Although technically speaking, JBJ is a strong trademark, in business practice, it is only a weak trademark because consumers hardly know this trademark." "Ruling that a trademark has inherent distinctiveness does not guarantee that the trademark is a strong trademark, because inherent distinctiveness does not guarantee that the trademark has strong distinctiveness in the market." This shows that the inherent distinctiveness has little influence on the actual distinctiveness of trademarks.

Practical significance and potential significance

In the practice of trademark protection, salience cannot be strictly quantified as arithmetic. "When a sign has a strong salience, it is impossible to make a general description. For example, by setting a percentage, when the percentage of consumers who regard a logo as a trademark reaches that percentage, the logo is significant. " Obviously, if all consumers in the market realize that a trademark is a manufacturer or service provider of related products, then it is a strong trademark. On the contrary, if no one thinks that logo has the above functions, it is meaningless.

However, in reality, no demarcation point can be quantified as a specific percentage. Below this cut-off point, the trademark that was originally remarkable is no longer remarkable. For those goods or services that people rarely buy and have a long service life, ordinary consumers only visit such markets occasionally, and people will not pay full attention to such goods or services until there is such demand. Other brands of goods or services have great influence on the whole society, and even people who have no purchase demand will pay full attention to them. Therefore, even if a quantitative cut-off point is to be determined, the specific percentage of the cut-off point should be different according to the type of goods or services, which makes this quantification impractical.

Therefore, trying to quantify the significance confuses two concepts: one is the actual recognition of a trademark by the public; Second, the ability of a trademark to indicate the source of a product or service in the relevant market. The actual identification of trademarks can often be quantified through market research, while the marking ability of trademarks to the source of goods or services is difficult to quantify, because it contains both actual and potential marking ability. Therefore, the actual awareness is not a standard to measure the ability of a logo to distinguish products.

Obviously, meaning can be divided into actual meaning and potential meaning. Chinese scholars have also discussed this: "the distinctiveness or identifiability of trademarks, that is, the characteristics that can play a significant role, should only be understood as a possibility, and it does not necessarily need to be actually possessed in real life." Trademarks with low actual salience may have high potential salience. Actual salience often represents the actual market recognition of trademarks, while potential salience is only the possibility of recognition. In this way, the potential meaning seems to be equal to the internal meaning, while the actual meaning seems to correspond to the acquired meaning. In fact, this is not always the case. Trademarks with low inherent distinctiveness, such as CocaCola and Microsoft, are originally descriptive and can also become strong trademarks, so they have high potential distinctiveness and in fact high actual distinctiveness. Whether the potential meaning can be fully realized depends mainly on the marketing ability and strength of the trademark owner, and has little to do with the attributes of the trademark itself. In this way, the initial choice and design of trademarks by enterprises is not as important as people think. Of course, practical meaning and acquired meaning can indeed be equated.

Examination of trademark distinctiveness

When an applicant applies for a registered trademark, it is one of the most important contents to examine whether the submitted trademark pattern has distinctive features. According to the provisions of the Trademark Law, a trademark lacking distinctive features is not granted the exclusive right to use a trademark. The distinctive features of a trademark usually refer to the features that a trademark should have in order to realize its functions, which are enough to enable the relevant public to identify the source of goods.

Take "Pure Cotton" and "Yaru" as examples. Both of them apply for registration in clothing products. We can find that "Yaru" trademark is easy to establish a unique connection between the trademark and the commodity provider, and it is suitable as a trademark, which is convenient for consumers to distinguish the source of goods, so we say that the trademark has the remarkable characteristics of a trademark.

The trademark "pure cotton" is because in the clothing industry, pure cotton is the main raw material of clothing fabrics, and it is also a word often used by clothing manufacturers in the marketing and promotion of products. Its meaning refers to a certain material, but it cannot be aimed at a certain manufacturer. In addition, "pure cotton" and "pure cotton" are similar in font and pronunciation. Therefore, a trademark similar to "pure cotton" does not have the remarkable characteristics of a trademark.

Usually, when we examine whether a trademark has distinctive features, we will mainly consider the following aspects:

1. All elements (including meaning, calling, appearance, etc. ) what constitutes the trademark logo itself, such as too simple lines or graphics, too complicated words, graphics, numbers and letters, or too complicated combination of these elements, are not suitable as signs to distinguish the source of goods. Signs that are too complex are as difficult to identify and call as those that are too simple.

2. Goods designated for use by trademarks. For example, the logo of Apple Computer is used in the fruit industry. Simply put, businesses selling apples use Apple's logo as a trademark. Or a shoe store takes the shape of leather shoes as a trademark, which obviously cannot distinguish the source of goods, and it is not convenient to distinguish these specific businesses from other peers in the consumer group.

3. The trademark stipulates the cognitive habits of the relevant public who use the commodity. When considering whether a sign is significant, the cognitive habits of the relevant public are very important factors. As a symbol to distinguish the providers of goods or services, trademarks are the relevant public of specific goods or services. In other words, when we observe whether a sign has distinctive features, we should stand in the perspective of the relevant public or consumers in this field. For example, the examination of trademarks of large medical devices should stand from the perspective of medical institutions, not patients; The examination of baby products trademarks should stand from the perspective of adults, not children; The examination of the trademark of cigarette packaging cable should stand from the perspective of cigarette factories, not smokers.

4. The actual use of the industries designated for the use of trademarks, mainly some trademarks, meet all the requirements of registered trademarks from the logo itself, even have been approved for registration, or have been rated as Chi Ming trademarks or famous trademarks. However, due to improper use and unfavorable protection, these trademarks have lost their distinctive features in the industry. Such trademarks include aspirin, nylon, Jeep Jeep and so on. When these signs become common words of behavior, they lose the distinctive features of trademarks and are no longer suitable for protection as registered trademarks. This also reflects the importance of well-known trademark protection from one side.

I hope I can help you adopt it.