Marks which are deemed to be “misleading” or having a “negative influence” can be cancelled. How can you prevent it?
Are your trademarks potentially misleading? Or can they be deemed as having a negative influence on society? Both of these are grounds for cancellation in China. Rouse’s Amanda Yang and Jasmine Lv look at examination criteria and trends, provide relevant examples and highlight strategies for trademark owners to adopt.
In recent years, trademark applicants in China have encountered an increasing number of unexpected rejections, with reasons including the mark being deemed as “misleading” or having a “negative influence”. The relevant articles in the legislation are abstract and difficult to understand by brand owners or IP practitioners; yet, using trademarks in violation of these articles carries a high risk of punishment by the local authorities. To better understand this landscape, Rouse has conducted research into the examination criteria applying to the relevant articles.
Recent trends
Article 10 of the China Trademark Law reads as follows:
The following signs shall not be used as trademarks:…
7. Those that may easily mislead the public concerning characteristics such as the quality of the goods or their place of production; and
8. Those detrimental to socialist morals or customs, or having other unhealthy/negative influences.
Trademarks violating these two provisions are prohibited not only from being registered, but also from being used. China’s National Intellectual Property Administration (CNIPA) applies stringent examination standards to trademarks that may potentially infringe these provisions. Although trademark applicants have the right to file for review with the Trademark Review and Adjudication Board (TRAB), the likelihood of success in such reviews is minimal.
According to our research, refusal notices are not publicly available, while refusal appeal decisions issued by the TRAB are open to the public. However, we obtained the decisions on a third-party commercial database, Mozlen. The graphs below illustrate the number of trademark refusal review cases (closed cases) between 2018 and 2023, as well as the ratio of appeals successfully overcoming rejections under Article 10(1)(7 and 8) of the Trademark Law.
Appeals of refusals due to misleading issues under Article 10(1)(7)
Source: Rouse
The speed of examination for a new application is around four to six months from the filing date, and around six to eight months for the examination of a refusal appeal. Therefore, it takes around 10 to 14 months for an application to go through substantive examination and a subsequent refusal appeal.
In the above graph, the columns represent the number of refusal appeal decisions based on a trademark being deemed misleading, while the purpose line indicates the total number of new applications filed in the previous year. This means that, in a year with a high total number of new applications, the total number of refusal appeals is correspondingly high. The graph illustrates that the risk of applications being rejected has increased over time. The chance of overturning the refusal of a trademark that was deemed misleading has dropped from 15% in 2018 to 7% in the past two years.
Appeals of refusals due to negative effect under Article 10(1)(8)
Source: Rouse
The columns in the above graph represent the number of refusal appeal decisions due to the mark being deemed to have a negative social influence. Before the amendment to the Trademark Law in December 2019, no provision clearly tackled bad-faith filings. Therefore, the China Trademark Office (CTMO) and the TRAB tended to use Article 10(1)(8) and find that bad-faith filings had a negative influence on society. This is why the total number of refusal appeal decisions in 2019 is very high, as seen in the chart. The data also shows that the chance of overturning a refusal based on Article 10(1)(8) dropped from 27% in 2018 to around 5% in 2023. It is thus apparent that the probability of overcoming the grounds for rejection under Article 10(1)(8) at the TRAB stage is low.
Examination standards for, and examples of, “misleading” trademarks
For the benefit of foreign applicants who lack familiarity with Chinese trademark examination and practice, we have looked more closely into how to handle rejections and the risks associated with trademark use.
The 2021 Trademark Examination and Adjudication Guidelines issued by the CNIPA state that Article 10(1)(7) of the Trademark Law may be violated if a trademark is deemed “misleading”. This refers to a trademark misrepresenting the quality or origin of the designated goods through false claims, exaggerations beyond reality or contradictions with factual information, thus potentially misleading consumers as to the quality or origin of the goods (eg, using terms such as ‘healthy’ and ‘longevity’ for tobacco products).
The assessment of whether a specific trademark is “misleading” necessitates an analysis of the designated goods and services, alongside their respective characteristics. However, if the likelihood that consumers will be misled as to the quality or origin of the goods or services is low, then the corresponding trademark does not fall within the scope of Article 10(1)(7). Trademarks that fall within the scope of this provision include signs that easily lead the public to be misled as to:
- the quality, excellence, functionality, purpose, ingredients, content, weight, quantity, price, craftsmanship, technology and other aspects of the goods or services; and/or
- the origin or source of the goods or services.
The table below provides examples of trademarks that were found to violate Article 10(1)(7).
Trademarks deemed as “misleading” by CTMO – rejection upheld by TRAB/court
| Trademark | Application No | Decision |
 | 7497952 | TRAB: The number ‘1837’ is misleading. The elements ‘mélanges exquis’, ‘millésimes d’exception’ and ‘grands crus prestige’ are French terms with literal meanings (ie, ‘exquisite mixture’, ‘exceptional vintage’ and ‘reputation of high-quality producing areas’). These terms may mislead the public and have a negative social influence. The use of ‘tea’ as part of the trademark on the approved goods could easily cause consumers to misidentify the characteristics of the raw materials of the goods. Court of first instance, court of second instance and retrial: The number ‘1837’ will easily be understood as referring to a year. As such, the relevant public may associate the sign with information such as the historical year of the provider or the year of creation of the commodity, which may affect the choice and judgement of the relevant public. The French terms ‘mélanges exquis’, ‘millésimes d’exception’ and ‘grands crus prestige’ have clear meanings, which directly or indirectly convey an impression of good quality, longstanding history and good reputation of the goods. It is not possible to ensure that these meanings are reflected in the goods approved for use under the disputed trademark. There is thus the possibility of misleading the relevant public. The word ‘tea’, when used on the approved goods (eg, sugar, chocolate and cookies), may not be an objective representation of the raw materials used to produce the goods. This may easily cause consumers to misidentify the characteristics of such raw materials. The trademark itself and its constituent elements contain descriptions that exceed the inherent attributes of the goods or services, and are thus likely to mislead the relevant public. To determine whether a certain mark is misleading, one should start with the cognitive ability of the public, and then apply this to the goods designated for use. |
 | 24595727 | The inclusion of the term ‘organic’ may easily cause consumers to misunderstand the functional characteristics of the goods when used on “baby food”. |
 | 27855982 | Use of the term ‘wild mountain’ on the designated goods (eg, “ginseng”) may mislead the relevant public as to the quality and origin of the goods. |
| TURF BUILDER | 40492534 | The term ‘turf builder’, when used on products such as “planting soil” and “floral preservatives”, may easily mislead consumers as to the specific features and functions of the designated goods. |
| FIRST CLASS AT SEA | 23656220 | The term ‘first class at sea’, when used on services such as “swimming pool services (water parks)” and “entertainment facilities”, may easily mislead consumers as to the content, quality and characteristics of the services. |
 | 31265108 | ‘ATF’ is the abbreviation of ‘automatic transmission fluid’. Use of that term on the designated goods (eg, “gear oil” and “engine oil”) may easily mislead the relevant public as to the content, model and other characteristics of the products. |
| IT’S WOOD | 42389254 | When used on the designated goods (eg, “furniture” and “flower stands (furniture)”), the sign may easily mislead the relevant public as to the raw materials of the goods. |
 | 54222813 | Marlboro is one of the world’s best-selling cigarette brands. Registration of the mark for “centrifuges; machine pumps” may easily mislead the relevant public as to the origin of the goods. |
 | 61364597 | A mark containing the element ‘jam’, when used on the designated goods (eg, “cream”), may easily mislead the relevant consumers as to the raw materials, ingredients and other characteristics of the goods. |
 | 61536856 | The element ‘meta’ can be understood as ‘meta language’. Use of the trademark on the designated services (eg, “recorded computer programs”) may easily mislead the relevant public as to the content and characteristics of the services. |
| SANCHEZ ROMERO CARVAJAL JABUGO | 65416619 | The mark contains the term ‘Jabugo’ – a world-renowned Spanish Iberian ham. Use of this mark on the designated goods (eg, “ham” in Class 29) may easily mislead the relevant public as to the origin of the goods. |
 | 65324007 | Use of a trademark containing the English word ‘kitchen’ for services other than “cafés, cafeterias, restaurants, fast-food restaurants, mobile food supply, teahouses and bar services” may easily lead to misunderstandings by consumers. |
Trademarks deemed as “misleading” by CTMO – rejection overruled by TRAB/court
| Trademark | Application No | Decision |
| WILD RIFT PROFESSIONAL LEAGUE | 55825111 | ‘Wild Rift Professional League’ is the corresponding English name of the ‘Mobile Legends Professional League’ – a high-level e-sports brand in Mainland China created for the League of Legends mobile game. The name forms a close correspondence with the applicant. The trademark applied for is used as part of a whole, which does not easily mislead the relevant public as to the quality, origin and other characteristics of the goods. |
 | 21108127 | The term ‘slowhand’ can be perceived as ‘slow hand’. It will not lead to misidentification by the relevant public when used on “guitars”. |
 | 26696609 | As the applicant limited the goods to “cheese”, use of the term ‘cheese’ in the trademark does not easily mislead consumers as to the characteristics of the goods. |
| WATERFOIL | 31677188 | The mark, to be used on “sinks” in Class 11, “bathroom furniture” in Class 20 and “household utensils” in Class 21, as well as other goods, does not violate the provisions of Article 10(1)(7). |
 | G1479672 | The element ‘seltzer’ refers to carbonated water, which is carbonised by carbon dioxide. As the logo is used for alcoholic sparkling water beverage products, consumers will not easily misidentify the raw materials and other characteristics of the products. |
Examination standards for, and examples of, trademarks with a “negative influence”
In the 2021 Trademark Examination and Adjudication Guidelines of the CNIPA, the phrase “socialist moral standards” in Article 10(1)(8) of the Trademark Law was explained as encompassing “the principles, norms and prevailing customs and habits of public life and behaviour within our nation during a specific period”. The term “other negative influence” includes not only situations that undermine socialist values, but also signs containing text, graphics or other elements with derogatory meanings or perceived negative impacts on China’s political, economic, cultural, religious and ethnic interests, as well as on public order.
When determining whether a trademark could be deemed detrimental to socialist moral standards or as having some “other negative influence”, factors such as the political background, social context, historical circumstances, cultural traditions, ethnic customs and religious policies should be taken into account. In general, the factual status at the time of examination will prevail when judging whether a sign or its constituent elements have “other negative effects”.
Specific circumstances under Article 10(1)(8) encompass, but are not limited to, trademarks that:
- are deemed harmful to socialist moral standards;
- are deemed to produce a negative political influence; and/or
- may be deemed to be detrimental and as having a negative influence on China’s economy, culture, ethnicity, religion and society, thereby causing harm to the public interest and public order.
The table below provides examples of trademarks that were found to violate Article 10(1)(8).
Trademarks deemed to have “negative influence” by CTMO – rejection upheld by TRAB/court
| Trademark | Application No | Decision |
| NO TIME TO DIE | 40516625 | The trademark is composed of the English phrase ‘no time to die’, the literal meaning of which is negative and indicates a pessimistic attitude to life. Using this phrase as a trademark may have a negative influence on social public interests and public order. |
| ROGUEKITTY | 26139069 | The term ‘rogue’ has the meaning of “a person who behaves badly, but in a harmless way”. It can also refer to a “dishonest and immoral” person. The term ‘kitty’ can be understood as ‘a fund of money for communal use’. The trademark is thus prone to having a negative social influence. |
 | G1297470 | The term ‘ayurveda’ refers to ‘Indian herbal medicine’. Its use on “soap”, “candles”, “painkillers” and other goods may mislead the public as to the function and raw materials of the goods, and its use on the designated goods may have a negative influence. |
| GOOF OFF | 25442600 | The term ‘goof-off’ in English slang means ‘an idle person’, which has a negative meaning. Therefore, using this word as a trademark would be harmful to socialist morality and may easily have a negative social influence. |
 | 40575194 | The term ‘sham’ means ‘fraud’; thus, its use as a trademark may easily have a negative influence. |
 | 38123969 | The trademark may easily be recognised or associated with a ‘womanizer’ by consumers. Thus, its use on the designated goods may have a negative social influence. |
 | 51116724 | The trademark contains the symbol for the Renminbi yuan, which may have a negative influence when used as a trademark. |
 | 60880180 | The skull device is likely to have a negative influence and shall not be used as a trademark. |
 | 65234173 | The term ‘cattish’ (meaning ‘spiteful’) may easily produce a negative influence. |
 | 51625559 | The term ‘Christian’ means “a person who believes in the teachings of Jesus Christ”. When used as part of the trademark on the designated services in Class 43, it is prone to having a negative social influence. |
 | 44347176 | The application contains the element ‘Trump’, which is similar to the name of US President Donald Trump. Using it on products such as “wooden woven indoor curtains for windows” and “indoor curtains (furniture) for windows” may have a negative influence. |
 | 60140874 | The word ‘premier’ can be understood as ‘Prime Minister’. Its use as part of the trademark on the designated goods may easily have a negative social influence. |
 | 66515380 | The term ‘joro’ can be understood as ‘prostitute’; thus, its use as a trademark on the designated goods is likely to cause a negative social influence. |
Trademarks deemed to have “negative influence” by CTMO – rejection overruled by TRAB/court
| Trademark | Application No | Decision |
 | 33048838 | The element ‘Super siam SS’, when used as a whole on the designated goods, will have no negative influence (‘Siam’ is a former name of Thailand). |
 | G1475670 | There is a significant difference in visual effect between the graphic element  and the word ‘nude’. Thus, it would be difficult for the relevant public to associate the graphic element with the concept of ‘nude’, and it was unlikely that the graphic element would have a negative influence when used on the designated goods. |
 | 40939343 | Although ‘sino’ has the meaning of ‘Chinese or Eastern’ when used as a prefix, the trademark as a whole is different from the national name of China. As a trademark used for “advertising” and other services, it does not have a negative influence. |
| BANANA REPUBLIC | 53355373 | The term ‘banana republic’ has no negative impact on China’s social public interest and public order, including on politics, economy, culture, religion and nationality. |
Strategic advice: how to reduce the risk of violating Articles 10(1)(7) and (8)
As marks that are deemed to be “misleading” or have a “negative influence” cannot be registered or used, there is a risk when using such marks in the market. Article 52 of the Trademark Law stipulates as follows:
[T]he local administrative department for industry and commerce shall stop such use, order rectification within a specified period, and may circulate a notice on the matter. If the illegal business revenue is over Rmb50,000 (around $6,900), a fine of up to 20% of such revenue may be imposed; if there is no illegal business revenue or a business revenue of less than Rmb50,000 (around $6,900), a fine of up to Rmb10,000 (around $13,800) may be imposed.
In light of the difficulties of overcoming rejections on the ground that the marks are “misleading” or have a “negative influence” (as well as due to potential risks during use), applicants should consider the following steps:
- Before filing a trademark application, it is recommended to conduct searches on the registrability of a mark, and to evaluate the risk of the mark being deemed as “misleading” or having a “negative influence”. A pre-application trademark registrability assessment can assist applicants in adjusting their application strategy, thereby enhancing the chances of successfully obtaining a trademark registration and avoiding the need to redesign the trademark. The rejection of a trademark application on the ground that it is “misleading” or has a “negative influence” may result in a delay in registering such trademark and impede the applicant’s business plan.
- Applicants may remove the “misleading” or “negative” parts from the trademark if such parts are descriptive or unimportant. Below are some tips to apply when a trademark is found to be “misleading”:
- For trademark applications covering food and medicine, the CNIPA applies stricter scrutiny concerning “misleading” elements. As it is even harder to overcome rejection in these circumstances, it is advisable to remove the misleading parts.
- Applicants should carefully select the designated goods or services to avoid an overly broad scope that could lead to comparisons with unrelated goods or services. For example, when filing a mark containing a word that describes the ingredient of a product, it is advisable to file only for goods specifically containing that ingredient (eg, “cheese” for the mark AIR CHEESE) or limit the goods (eg, the mark WESTIN WHITE TEA ALOE for “soap containing white tea and aloe vera extract ingredients”). If the goods limitation is not allowed (as the CTMO tends to accept the standard wording of the Nice Classification) and the application is rejected, the applicant can then apply for review and consider abandoning some unrelated goods or services. Applicants can also provide evidence demonstrating the relationship between the applied-for mark and the approved goods or services.
- If a trademark application is rejected under Article 10(1)(7) or (8), applicants should be cautious when applying for a review. If the review is unsuccessful, the decision will be published and open to the public. If an applicant already owns prior registrations and the new application is just a back-up, then a review against the rejection is not recommended, as this may affect existing registrations.
- If a mark containing an element deemed to be “misleading” or “negative” has been put to use, that mark should not be used after the application has been refused. If it is descriptive of the goods, then using it in a non-trademark way (ie, not attaching the symbols TM or ®) may reduce challenges from the Chinese Market Supervision and Administration. We have found some penalty decisions based on violations of Articles 10(1)(7) and (8) in our search of third-party databases, with dozens of cases involving violations of Article 10(1)(7) and around 100 cases involving violations of Article 10(1)(8) in the past five years.
For further information, please contact:
Amanda Yang, Rouse
ayang@rouse.com
