Who has the final say on the meaning of English trademarks

With the deepening of my country’s opening up to the outside world and the rapid popularization of English knowledge, many companies and individuals have chosen to register English trademarks. When examining whether an English trademark can be registered, the meaning in English is an important review factor because it involves various circumstances of trademark registrability. For example: Is the trademark distinctive on the designated goods? Is this trademark similar to a Chinese trademark previously registered by others on the same or similar goods? Does the meaning of this trademark violate the prohibition regulations?

How to correctly grasp the meaning of English trademarks? It can be said that the meaning generally recognized by the relevant public when combining goods or services with the trademark is the meaning of the trademark in English. However, this answer is relatively general and difficult to operate in practice. To this end, the author will discuss some confusing issues based on real cases. I hope that through the discussion, everyone will have a clearer understanding of this issue.

In order to facilitate discussion and eliminate interference from other factors, the trademarks discussed below are plain English word trademarks in ordinary print.

1. Are two words put together a made-up trademark?

A Taiwanese company applied to register the "eDisk" trademark on computers and other products, but the trademark office rejected it on the grounds of lack of distinctiveness. The company applied for reexamination to the Trademark Review and Adjudication Board, but was rejected by the latter for the same reason. Afterwards, the company filed an administrative lawsuit with the court, claiming that "eDisk" was created by the plaintiff and could not be found in any dictionary. It was a fictitious trademark and had the distinctiveness of a trademark. The Trademark Review and Adjudication Board believes that the "D" in "eDisk" is a capital letter, and ordinary consumers can easily identify the trademark into two parts: "e" and "Disk", where "e" is often used to mean "electronic", and " "Disk" means "disk" and is a commonly used trade name in the computer industry. "eDisk" as a whole does not have the distinctiveness that a trademark should have. The court's first-instance judgment upheld the decision of the Trademark Review and Adjudication Board.

A fictitious trademark refers to a trademark that is made up by the applicant and has no meaning. Fictitious trademarks have no meaning and are highly distinctive, so they can be registered. However, since the fictitious trademark itself has no connection with the goods, although consumers will not be confused about the source of the goods, it is difficult for consumers to remember the trademark and build popularity in the short term. Therefore, many companies intentionally or unintentionally play word games and combine two descriptive words to register, hoping to avoid the law and obtain registration, and save the cost of publicity and promotion of trademarks. However, whether a trademark has meaning and whether it is a fictitious trademark should not be based on whether the entire word of the trademark is included in a dictionary. A trademark composed of two words with meanings is not a fictitious trademark. If it is descriptive of the designated goods as a whole and cannot be used to indicate the source of the goods, it still cannot be registered. This is what the "eDisk" case has taught us.

Some people may ask, "D" in the "eDisk" trademark is a capital letter. It can be seen that the applicant has the intention to guide consumers to understand the trademark into two parts. Of course, it cannot be registered; but if the two words Can it be registered if there are no uppercase and lowercase letters, hyphens, spaces or spaces to distinguish between them? In fact, the court gave a clear answer in the "supershot" case. The court held that consumers could easily understand the meaning of the trademark as "super strong injection", and its use on the injection molding machine product directly described the functional characteristics of the product. Therefore, it upheld the rejection decision made by the Trademark Review and Adjudication Board. It can be seen that as long as it is easy for consumers to separate and understand the trademark, there is no distinctiveness as a whole, and any English word combination trademark that does not serve the purpose of indicating the origin of the product should not be registered.

2. Should the meaning of the English trademark be based on the applicant’s description?

In a case in which a company filed a lawsuit against the Trademark Review and Adjudication Board’s decision to reject its registration of the “Space Shuttle” trademark on wires, cables and other goods, the company claimed that the Trademark Review and Adjudication Board used the term “Space Shuttle” to It is incorrect to reject the registration of a trademark on the grounds that it is similar to "SPACE SHUTTLE" previously registered by others on similar goods; according to the Trademark Law, "If a trademark is in a foreign language or contains a foreign language, (author's note: the applicant) should explain the meaning." stipulations, whether "SPACE SHUTTLE" has the meaning of "space shuttle" should be based on the description in the registration application for the trademark.

The author does not agree with the plaintiff’s statement in this case. Although the Trademark Law stipulates that the applicant should explain the meaning of the foreign language trademark, this does not mean that the Trademark Office or Trademark Review and Adjudication Board must rely on the applicant’s interpretation. Otherwise, the applicant can describe the meaningful words as meaningless, the descriptive words as non-descriptive, or explain it with the uncommon meaning of the word to avoid registration risks. If this is the case, the aforementioned "eDisk" and "supershot" can also be registered openly through the applicant's explanation, which will inevitably lead to the destruction of the market competition order in the long run. Therefore, the above explanation given by the plaintiff in this case is obviously contrary to the legislative purpose of this paragraph. The applicant's explanation of the meaning of the foreign trademark in the application can only be used as a reference for the examiner during the examination. In the end, the examiner still needs to comprehensively review the existing evidence, based on his own daily experience and examination practice, and from the perspective of consumers. Starting from general cognition, draw conclusions.

3. Can only the first meaning in the dictionary be used as the meaning of an English trademark?

In another trademark confirmation administrative lawsuit, the plaintiff believed that the first meaning of the word "blink" in "Blinkscan" in the dictionary is "blink", so the trademark is used in scanners, etc. The product cannot be understood as describing the characteristics of the flashing beam during the working process of the scanner, and thus the trademark is not distinctive. The Trademark Review and Adjudication Board believes that the word "blink" has the meaning of "flash". Although this meaning is not listed as the first meaning in the dictionary, it does not mean that this meaning is uncommon. In fact, consumers are more likely to understand the word as "flash" when combined with products, and thus will not recognize the word as a sign of origin. The first-instance judgment of the court adopted the views of the Trademark Review and Adjudication Board.

It is very common for a word to have multiple meanings in English. Generally, dictionaries will put the original meaning of the word as the first meaning, and the extended meaning and metaphorical meaning will be placed later. But this does not mean that the extended or metaphorical meanings are uncommon. In fact, the extended or metaphorical meanings of many words are more widely used than their original meanings. At the same time, the meaning of an English trademark should not be solely determined by the trademark applicant's interpretation, but should be judged based on the possible perceptions of ordinary consumers in conjunction with the product.

4. What is the difference between one word with multiple meanings and one word with multiple translations?

In the "Space Shuttle" case, the plaintiff claimed that "SPACE SHUTTLE" has multiple meanings, including "space shuttle", "space shuttle" or "space shuttle". The Trademark Review and Adjudication Board believes that "space shuttle" and "space shuttle" are the same thing, and are two translation methods of "SPACE SHUTTLE", rather than the word having multiple meanings.

So what is the difference between one word with multiple meanings and one word with multiple translations? Polysemy means that English itself has multiple meanings, such as original meaning, extended meaning and metaphorical meaning, noun meaning, verb meaning and adjective meaning. Multi-translation means that an English word has multiple translations, but the various translations have the same meaning and are the same thing. For example, "laser" can be translated into "laser" or "laser".

What is the significance of distinguishing the above differences in trademark examination? Unless there is a greater correspondence between an English trademark with multiple meanings and a previously registered Chinese trademark in terms of meaning, it is less likely that the two will be recognized as similar trademarks, so the English trademark is more likely to be registered. big. For example, the Trademark Review and Adjudication Board once determined that the "sail" trademark applied by an enterprise is not similar to the "sail" trademark previously registered by others, even though "sail" is one of the meanings of "sail".

Of course, if there is a large correspondence between the two, it is another matter. For example, in the "BOSS" case in 2003, the Trademark Review and Adjudication Board believed that "BOSS" was similar to the "Boss" trademark previously registered by others. The reason was that the relevant public in China had a high awareness of "BOSS", which means "Boss". . The court accepted this argument. Relatively speaking, the Chinese trademark text is a translation of the English trademark text, and if the two trademarks are used on the same or similar goods, it is more likely to cause confusion and misunderstanding among the relevant public than if the word has multiple meanings. Of course, the premise is that this translation method is accepted by a considerable part of the relevant public. In the "Space Shuttle" case, "Space Shuttle" as a translation method of "SPACE SHUTTLE" has been widely accepted in mainland China. For example, if you enter the word "space shuttle" on GOOGLE, you can get tens of thousands of related information, and the word has been included in commonly used dictionaries.

The above discussions are all about the meaning of plain English trademarks in ordinary print and their significance in trademark examination. However, English trademarks are not limited to pure English trademarks in ordinary print. They may also be artistically processed word trademarks, or trademarks that are a combination of words and graphics. This article also does not discuss the situation where a trademark has acquired distinctiveness through use. Under the respective or simultaneous effects of the above different factors, different results may occur. In short, trademarks are very case-by-case. Even the meaning of English trademarks cannot be discussed exhaustively in this article. The examiner needs to follow the general review principles and draw conclusions based on the specific circumstances of the individual case.