Hello, distinctiveness refers to the attribute of a trademark that indicates the source of a company’s goods or services and distinguishes them from those of other companies. As the "soul" of trademark protection and the "hub" for the normal operation of trademark law, trademark distinctiveness has always received special attention from both theoretical and practical circles.

Determination method

“The distinctiveness of a trademark is generally relative to the designated goods and services. This principle is self-evident.” Determining whether a certain mark is distinctive It cannot be done in the abstract, but should consider the goods or services to which it is intended to be attached. The concept or meaning of the mark cannot be directly related to the marked object, that is, the goods or services, or has only a small or indirect correlation. At the same time, the subjects who judge whether a certain mark is distinctive are not the examiners or judges of the Trademark Office, but ordinary consumers in the relevant market. When ordinary consumers identify a certain mark as a trademark during daily shopping, the mark is distinctive. An ordinary consumer usually looks at the trademark mark as a whole and does not examine the details of the mark. He or she has reasonable relevant knowledge and A reasonable degree of care is required, and the degree of care will vary with the type of goods or services. As a product of the development of commodity economy, the trademark system completely depends on the specific market, and the background of trademark use determines everything.

There is a degree of distinctiveness issue. Any mark that meets the minimum distinctiveness requirements, that is, has inherent distinctiveness, can be registered as a trademark. In fact, the degree of trademark distinctiveness often far exceeds this standard. Therefore, under normal circumstances, as long as there are no obvious defects in a mark, distinctiveness can be presumed. In practice, "the judgment of trademark distinctiveness generally adopts the method of proof by reductio, that is, excluding certain signs that cannot be used as trademarks or registered as trademarks." From a legislative perspective, most of the distinctiveness provisions of various countries' trademark laws are prohibited Sexual clause, that is, directly exclude those unqualified marks from trademark protection. As far as academic research is concerned, "the composition of a distinctive trademark cannot be clearly defined from the front, so analyzing it from the reverse will be more helpful in determining whether a trademark meets the requirements for distinctiveness." Distinctiveness is dynamic and variable. Yes, a mark that was originally not distinctive may become distinctive due to long-term use. On the contrary, a mark that was originally distinctive may also lose its distinctiveness due to improper use. This involves the issue of obtaining distinctiveness.

In practice, such misunderstandings often occur. It is believed that words not used by competitors are often significant. Words frequently used by competing companies are unlikely to be significant. But this is not the case. First, the fact that a term is not used by competitors does not affect the descriptive or salient attributes of that term. For example, there is a blood pressure monitor that can be worn on the wrist like a watch. When the European Matsushita Company applied to register "BLOOD PRESSURE WATCH" as a blood pressure monitor trademark, it pointed out that no competing company used the "blood pressure watch" trademark, so the word was distinctive. But Bureau examiners and appeals committees ultimately rejected the application. The fact that a term is not used by a competing business is relevant only in determining whether the term is a common name. However, it will not have any impact on the judgment of inherent significance. Second, the fact that a term is also used by competing businesses is not sufficient to overturn its distinctiveness. Someone once pointed out that "mail" is common in the names of many newspapers. For the trademark owner, the word is not distinctive, so the "THE MAIL" trademark is not enough to distinguish its owner's newspaper from other newspapers. But this argument was ultimately rejected on the grounds that uniqueness itself is not a prerequisite for distinctiveness.

In short, whether a certain trademark is distinctive should be judged based on the specific circumstances of each case. There is no iron-clad rule that is universally applicable.

The strength of trademark distinctiveness and its distinguishing significance

The theory of distinguishing the strength of trademark distinctiveness originated from the United States.

This theory distinguishes strong marks and weak marks based on the inherent distinctiveness (identity) of trademarks. Only strong marks can obtain federal registration, that is, only the trademark itself is distinctive or the trademark Only when the owner proves that his trademark has acquired a secondary meaning can the trademark be registered in the Principal Register. Strong trademarks include three types: fanciful marks, arbitrary marks and suggestive marks. Taking word trademarks as an example, the so-called fictional trademark means that the words or letter combinations that constitute the trademark have no meaning in the dictionary. For example, "Exxon" (a trademark of the Standard Oil Company) itself describes nothing and has no meaning. However, not all trademarks composed of self-created words are fictitious trademarks. The formation and pronunciation of some words allow consumers to recognize a certain meaning. For example, if the "Breadspred [sic]" trademark is used on goods such as "jam and jelly", it will make consumers think that it constitutes a description of the quality characteristics of the goods they use, that is, the jam can be spread on bread. Therefore, the trademark is not a fictitious trademark. The so-called arbitrary trademark means that the words or word combinations that constitute the trademark have a fixed meaning in the dictionary, but have nothing to do with the goods or services they specify. For example, the "Yahoo!" trademark used on the "Internet search engine" [Author's note: Yahoo (Yahoo) is one of the famous websites familiar to Chinese consumers. The word means humanoid beast; Yahoo, after referring to the habits of beasts Abominable people, people with human faces and animal hearts. The "Black & White" trademark used on "Scottish Alcoholic Beverages". The so-called suggestive trademark refers to a trademark that alludes or implies the nature or quality of the goods used. For example, the trademark "Roach Motel" implies but does not directly describe its function of using the product "insect trap": although the trademark "Rain Dance" does not directly describe its use of the product "car wax", But it hints at the function of "the wax will keep rain water away from the car." Common forms of weak trademarks include descriptive marks, geographical marks and family names (surname). The so-called descriptive trademark refers to a trademark that only describes the functions, quality, ingredients and other characteristics of the goods it is used for. For example, "Vision Center" simply describes a place where you can buy eyeglasses. The so-called place name trademark refers to a trademark that describes the place where goods are produced or the place where services are provided. For example, "San Francisco Bay Club" describes that the health club is located near the San Francisco Bay. In order to obtain federal registration and prohibit use by others, the owner of the trademark must prove that consumers can distinguish the club from other clubs located near the San Francisco Bay by the mark. A surname trademark is a common surname used as a trademark, such as the “Newman’s Own” trademark used for “salad-flavored dressing”. For such trademarks, the U.S. Patent Office will not approve registration unless the applicant can prove that the trademark has acquired a secondary meaning through use. The reason is that many people may use the same surname at the same time, allowing one person to enjoy trademark rights over the surname. There will be unfair consequences for others. Strong trademarks and weak trademarks are theoretically divided. Examiners at the U.S. Patent Office (PTO) do not use this terminology in trademark examinations. Instead, they use the terms "inherently distinctive" and "inherently distinctive" stipulated in the U.S. Trademark Law. Terms such as "merely descriptive".

Nonetheless, blandness, lack of originality or imagination do not constitute evidence that a mark lacks distinctiveness.

However, in practice, trademark authorities in various countries will still deviate from the correct distinctiveness standards from time to time and reject an enterprise's trademark registration application on the grounds of lack of originality or creativity. For example, the Appeal Committee of the European Union's Office for Harmonization in the Internal Market rejected an application to register the "MULTI 2'NI" ??mark as a trademark for various tools and accessories on the grounds that the applicant did not show any imagination for the combination of these commonly used words, and therefore Seems bland. Similarly, even after admitting that a trademark does not need to be original or reflect the designer's imagination, the EU Court of First Instance still ruled that the mark "CINE ACTION" was not suitable for businesses including movie screenings and rentals on the grounds of "lack of minimum imagination". In another case, the European Union's Office for Harmonization in the Internal Market rejected an application to register the business slogan "Beauty lies not in youth but in propriety" as a trademark on the grounds of blandness and lack of originality. The appeals board remanded it for reconsideration, noting: "The slogan is not bland, but is a statement consistent with a 'beauty philosophy'. "It is not difficult to see that although there are deviations in the Coordination Bureau's understanding of trademark distinctiveness, the reasons proposed by the Appeals Committee for remanding for reexamination are also inappropriate, because blandness is not a fatal flaw in trademark registration. On the contrary, a French court The understanding of distinctiveness is more profound, and it clearly points out that trademark rights are not based on creation. In fact, lack of originality or creativity is not an inherent defect in a trademark.

Significance and acquired distinctiveness

Inherent distinctiveness and acquired distinctiveness are the most important concepts in traditional theory, but recently some scholars have clearly pointed out: "The concepts of inherent distinctiveness and acquired distinctiveness have caused a lot of confusion. to the problems it solves. "This conclusion may be biased, but it is by no means groundless. Here is a brief analysis, and a detailed discussion will be discussed in another article.

According to the degree of eligibility for trademark protection, traditional theory Various signs are divided into five types: (1) common names, (2) descriptive words, (3) suggestive words, (4) random words and (5) made-up words. Among them, suggestive, random and made-up words. All words have inherent distinctiveness, while descriptive words and common names do not have inherent distinctiveness due to their strong association with the goods indicated. The so-called inherent distinctiveness means that the trademark mark cannot be reasonably understood as an infringement. With the description or decoration of the product attached to it, consumers will automatically regard this mark as an indication of the product's origin. Therefore, it can be directly registered as a trademark. For example, Haier refrigerator, Apple computer and Jianlibao beverage are respectively fictional, arbitrary and suggestive trademarks. ; Marks that directly describe the nature, origin, ingredients, etc. of the product or that can be reasonably regarded as product decoration are not distinctive and shall not be registered as trademarks. Among them, descriptive or decorative marks may be consumed after long-term use. If a product has a secondary meaning or a secondary meaning that indicates the origin of the product, it has obtained the distinctiveness required by the trademark law. Traditional theory also refers to the acquired distinctiveness as "the fabrication of distinctiveness", such as Wuliangye Baijiu and Liangmianzhen. Toothpaste and Tsingtao beer.

In fact, "from the perspective of modern linguistics, no meaning can be 'inherent' to words, and the meaning of words can only be the product of social interaction. . "Trademark, as a kind of commodity language, is no exception. There is no natural trademark. Even a sign with inherent distinctiveness cannot be immediately and automatically recognized as a trademark by consumers when it is registered or used. The distinctiveness of a trademark can only be achieved through In this sense, a trademark cannot be inherently distinctive and can only be acquired through marketing or advertising.

At the same time, it must be noted. , inherent distinctiveness only describes the relationship between a sign and its marked object from a negative or negative aspect. Logically speaking, the definition cannot be negative.

It seems that the initial choice and design of a company's trademark is not as important as people think. Of course, actual significance and acquired significance can indeed be equated.

Examination of Trademark Distinctiveness

When an applicant applies for registration of a trademark, whether the submitted trademark drawing has distinctive features is one of the most important review contents. According to the provisions of the Trademark Law It is stipulated that signs lacking distinctive features shall not be granted exclusive trademark rights. The distinctive features of a trademark usually refer to the features that a trademark should possess in order to fulfill its functions and that are sufficient to enable the relevant public to distinguish the source of the goods.

Take the two trademarks "Chunmian" and "Yaru" as examples. Both of them have applied for registration in clothing products. We can find that the "Yaru" trademark is easy to establish a unique connection between the trademark and the product provider, and is suitable as a trademark to facilitate consumers to distinguish the source of the product, so we say that this trademark has the distinctive characteristics of a trademark.

As for the "pure cotton" trademark, since in the clothing industry, pure cotton is the main raw material for clothing fabrics, and it is also a word often used by clothing manufacturers in marketing and publicity of their products, its meaning generally refers to a certain brand. It is a kind of material and cannot be pointed to a certain manufacturer in a targeted manner. In addition, "pure cotton" and "pure cotton" are very similar in terms of font shape and pronunciation. Therefore, a trademark similar to "Chun Mian" does not have the distinctive characteristics of a trademark.

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

1. The various elements that constitute the trademark mark itself (including meaning, Calling and appearance composition, etc.), such as overly simple lines or graphics, overly complex text, graphics, numbers, letters, or overly complex combinations of these elements, are not suitable as signs to distinguish the source of goods. A logo that is too complex is as difficult to recognize and call as a logo that is too simple.

2. Products designated by trademarks, for example, the logo of Apple Computer is used in the fruit industry. To put it simply, merchants selling apples use the appearance logo of Apple as their trademark. Or if a shoe store uses the appearance of leather shoes as its trademark, it is obviously unable to distinguish the source of the goods, and it is also inconvenient to distinguish these specific merchants from other similar businesses among consumer groups.

3. The cognitive habits of the relevant public of the goods designated by the trademark. The cognitive habits of the relevant public are a very important factor when considering whether a mark is distinctive. A trademark is a sign that distinguishes goods or service providers, and the subject of its identification is the relevant public of specific goods or services. It can also be said that when we observe whether a sign has distinctive features, we should stand from the perspective of its relevant public or consumers in this field. For example: the review of large medical device trademarks should be from the perspective of medical institutions, not patients; the review of baby product trademarks should be from the perspective of adults, not children; the review of cigarette packaging sealing string trademarks The review should be from the perspective of the tobacco factory, not the smokers.

4. The actual use situation of the industry in which the trademark is designated to be used is mainly due to the fact that some trademarks, from the perspective of the mark itself, meet all the requirements for registered trademarks, and have even been approved for registration, or It was once rated as a well-known trademark or famous trademark. However, due to improper use and unfavorable protection, these trademarks have lost their distinctive features in the industry. Such trademarks include "aspirin", "nylon", "Jeep", etc. When these signs become generic terms for behavior and thus lose their distinctive features, they are no longer suitable for protection as registered trademarks. This also reflects the importance of well-known trademark protection from one aspect.

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