Xnay on the XX, at least for China trademark purposes
China trademark practice is full of standards (both formal and de facto) that lead to strange results, not least because CTMO examiners don’t apply the standards consistently. One of the more confusing standards concerns the relationship between the length of a trademark and inherent distinctiveness. The basic rule is that a trademark must have a minimum of three letters or it may be rejected as not distinctive.
The rationale for this standard is that if a trademark only has one or two letters (plus numbers, perhaps), it looks like a product number, not a brand name. And the CTMO doesn’t want to protect product numbers. So if you have a brand name of just one letter, or one letter and a number, or two letters, or two letters and a number, you should not count on a successful registration.
On a certain superficial level, this makes sense; product numbers have a certain generic quality to them and trademark law should not allow the registration of generic names. But on closer inspection, the rule is overly formalistic and absurd: three letters good, two letters bad.
According to the CTMO’s rules, Paramount Pictures could protect the Vin Diesel secret agent franchise “XXX” with a trademark registration, but the British band The XX and the seminal Los Angeles punk band X would be out of luck. Also out of luck would be the T-1000 (the shape-shifting liquid metal Terminator introduced in Terminator 2: Judgment Day), the ED-209 robot from Robocop, and Mazda’s popular RX-7 sports car.
Article 11 of China’s Trademark Law provides that descriptive, generic, and otherwise non-distinctive marks can acquire distinctiveness through use, which sounds like the exception that will save the day for rationality, but unfortunately this exception is almost solely theoretical. Audi spent a lot of time and money trying to prove that “A4” and “A8” had gained distinctiveness through use in commerce and they had a mountain of evidence to back up their claims because both those models had sold well in China. They still lost.
Meanwhile, you’d think A24 (the film company that won a Best Picture for Moonlight) would be out of luck, and you’d be right, except that A24 opted to file an application in China solely for their logo, a circle containing a stylized “A24” in the middle. And therein lies the solution. If you can’t register your trademark as a standard character mark, your only realistic chance at registration is to cloak it in the guise of a graphic, and (assuming the graphic is distinctive) file a single application covering both.
Or you can just apply and hope you get a lax examiner.
–This article originally appeared on China Law Blog.
