English, as a universal language, can meet the needs of enterprises to use it as a trademark in any country, and is easy for consumers to know. When exploring overseas markets, China enterprises often translate their names and major brands into English and apply for registration at home and abroad. How to judge whether the British trademark registration application is true when it is rejected on the grounds of "only showing the function of goods and lacking distinctiveness"? Trademark Network briefly analyzes this case by citing relevant cases.

Related cases

Case 1

On March 2, 217, True Color Stationery Co., Ltd. applied for registration of the ninth category commodity trademark 2299969. The Trademark Office believes that trademarks can be translated into "true colors" to designate commodities and directly indicate the functions of commodities. It cannot be registered as a trademark. The application for trademark registration was rejected. After rejecting the re-examination procedure, the Commercial Re-examination Board held that there was no sufficient reason to confirm that the application for trademark registration and use directly indicated the role of the goods in the designated goods, and put forward preliminary examination and approval.

case 2

on April 1, 215, Xiamen zhongkong biometric information technology co., ltd. registered the application number of category 9 goods with the trademark number of 16613241

. The Trademark Office believes that the English translation of trademarks is "safe", and the use of trademarks in designated goods only directly expresses the characteristics of goods, which is easy to cause misunderstanding by consumers. May not be registered as a trademark. After rejecting the examination procedure, the Commercial Appraisal Committee held that the application for trademark use did not directly indicate the role of the goods in the designated goods, and made a preliminary examination and approval.

How to judge whether a trademark represents the functional use of goods

The trademark examination standard stipulates that "only the function and use of the designated goods can be directly expressed" shall not be used as a trademark registration mark. For example, the function of "vehicle tires" is to reduce the impact of vehicle running and bear the weight of the vehicle. The use of "truck tire" in "automobile tire" goods directly shows that the tire has strong bearing capacity, which is a direct description of the main functions of the goods.

The function of "leakage protector" is to prevent the leakage of electrical appliances and protect personal safety. "Safety" means "safety". The use of "leakage protector" in commodities shows that commodities play a role in ensuring safety and is a direct description of the main functions of commodities.

the function of "gas purification device" is to transform polluted air into pure and clean air. Pure gas is used in "gas purification device" goods, which shows that the function of goods is to transform into pure air, which is a direct description of the main functions of goods.

"thrombolytic lipid clearance" promotes the dissolution of fibrin/fat, and converts it into energy which is beneficial for human body to absorb. The use of "thrombolytic lipid clearance" in "pharmaceutical preparations" shows that the function of this commodity is to promote human energy metabolism, which is a direct description of its main functions.

"brain gene" is a gene that contributes to the production of human brain activities. The function of brain genes in "medical nutritious drinks" is to promote the rapid production of human brain genes, which is a direct description of the main functions of commodities.

from the above example, it is not difficult to see that the most direct criterion for judging whether the trademark registration represents the function and use of the designated goods is whether the trademark characters are consistent with the functions of the goods. If they are consistent, they are the expression of the functional use of goods. If not, it is not the expression of the function and use of the commodity.

under what circumstances does it not constitute a description of the function of a commodity?

in view of the above situation, when English words are used in designated commodities, under what circumstances can it be determined that they do not constitute descriptions of commodity functions? Trademark Network believes that the following aspects should be considered:

1. How to understand English words most appropriately

To translate the above two words in Shanghai Ci, Iciba, Youdao Translation and Baidu Translation, "TRUECOLOR" corresponds to "true color, true chromaticity, full color and true color" in Chinese, while "ZKBIOSECURITY" has no meaning as a whole, and the meaning of "SECURITY" is

The above is only a literal translation of relevant English words, but does this translation meet the reasons for trademark owners to apply for trademark registration? The word "TRUECOLOR" does have the meaning of "TRUE COLOR", but in this trademark, "true" mainly chooses the meaning of "true" and "color" chooses the meaning of "color", which together means "TRUECOLOR", that is, the enterprise name of the trademark owner and the main logo, so it is more reasonable to understand "true color" in this way.

"zk" in "ZK Biosecurity" is the pinyin initial combination of "Zhongkong"; "Bio" is short for "Biology", which means biological information; "security" refers to the security system of the right holder, and "ZKBIOSECURITY" is understood as the central control biometric technology, which is consistent with the products of the trademark right holder and more in line with the understanding of trademark registration.

when a trademark owner chooses trademark registration as his own trademark, he must have his own specific purpose, such as protecting the trademark name or new trademark. Understanding the trademark in a certain context is more in line with the original intention of the obligee.

2. Do English trademarks represent the functional features of the designated goods?

the application for trademark registration of "true color" is used in category 9 "mobile power supply (rechargeable battery); Storage battery; Primary battery pack; Battery for vehicles; Timekeeper (time recording device); Magnetic data medium; Battery; Battery charger; Ignition battery; Solar cells; Primary battery; Ruler (measuring device); Battery; Compasses for measurement; On the abacus commodity, the function of the commodity is mainly to record data, measure things and provide electric energy. No matter "true color" or "true color", it has nothing to do with the functions of recording data, measuring things and providing electric energy.

the application for trademark registration of "zkbiosecurity" is used in category 9 "data processing equipment; Magnetic identification card; Bar code reader; Computer; Computer software (recorded); Computer program (downloadable software); Computer peripheral equipment; Integrated circuit card; Monitor (computer hardware); Magnetic encoder; Hand print tester; Timekeeper (time recording device); Attendance machine; Attendance clock (time recording device); Network communication equipment; Mirror (optics); Optical instruments and instruments; Electric switch; Control panel (electric); Electronic ignition device for long-distance ignition; Personal accident prevention device; Electric lock; On the electronic anti-theft device, the functions of this kind of goods are data programming, things recording, risk prevention and control, and the "central control biometric technology" translated by ZKBIOSECURITY has no direct connection with the above-mentioned goods.

when English is translated into Chinese, it is judged whether it is consistent with the functional use of the commodity according to its expressed meaning. If it is consistent, it indicates the functional use of the commodity; if it is inconsistent, it does not belong to the content specified in this article.

3. Other considerations

First, the prior registered trademark can prove that the trademark does not represent the functional characteristics of the goods. Long before the relevant trademark application, the trademark owner has applied for the registration of "TRUECOLOR" and "ZKBIOSECURITY" trademarks on the same or related goods, which can prove that the use of trademarks on the designated goods does not indicate the functional use of the goods.

second, judging whether a trademark registration belongs to a direct descriptive mark should be based on the first cognition of the relevant public when they see the mark. The relevant public mainly refers to ordinary consumers and operators in the same industry. The brand of "TRUECOLOR" has been used for more than ten years, forming a stable market, and has been rated as "China Famous Trademark", enjoying a high popularity and reputation. When consumers or operators in the same industry see "TRUECOLOR", they will first associate it with the Chinese character "True Color" and then associate it with "True Color" series of commodities. Its use as a trademark registration will not cause the relevant public to produce features such as goods.

first of all, trademark registration can prove that a trademark does not have the functional characteristics of a commodity, and the extensive use and publicity of a trademark can further enhance the prominence of a trademark, so that when the trademark registration is used on a designated commodity, the distinctiveness of the trademark registration on the designated commodity can be improved. The relevant public will not understand it as a functional use of goods.