Overcoming refusal of TMs containing ingredient names in China
Hui Zhuang of CCPIT Patent and Trademark Law Office discusses several strategies to increase the chance of pharmaceutical or food trademarks that include ingredients being registered.
In China’s pharmaceutical and food industries, trademarks often incorporate ingredient names. However, such marks frequently encounter refusal under Article 11 of the Trademark Law for lacking distinctiveness if they merely describe the product’s composition (eg, ‘Green Tea’ for tea beverages).
Even when a trademark combines an ingredient name with other distinctive elements, it may be still subject to rejection under Article 10.1.(7) of the Trademark Law for being “deceptive and likely to mislead the public regarding the quality, characteristics, or origin of the goods”.
The Trademark Examination Guidelines explicitly classify “misleading claims about a product’s main ingredients” as a deceptive practice, though they also clarify that this does not apply if the mark’s meaning is unrelated to the designated goods. The key to overcoming refusal lies in demonstrating that the public is unlikely to be misled. This can be addressed through two primary approaches:
(1) For cases where the ingredient name in the trademark is highly associated with the designated goods, verifying the fact that the goods contain the ingredient by nature, nullifying any possibilities of misleading the public;
(2) For cases where the ingredient name in the trademark is far less associated with the designated goods, claiming that the relevant public, based on common sense and general knowledge, would not mistakenly believe the designated goods contain the ingredient, thereby avoiding any deceptive misleading.
I. The designated goods contain the ingredient
If the product genuinely includes the ingredient referenced in the trademark, consumers will correctly associate the mark with the actual composition, eliminating any deception.
Applicants facing refusal can submit evidence proving the ingredient’s presence, though this may be challenging. A more practical alternative is to narrow the goods’ scope to only those containing the ingredient.
Examples:
(a) The trademark ‘Life’s DHA’ was designated for Class 5 goods such as ‘medical food nutritional additives (containing docosahexaenoic acid); nutritional supplements (containing docosahexaenoic acid)’, with all goods limited to those containing the ingredient (DHA is docosahexaenoic acid).
The Beijing Intellectual Property Court and the Beijing High People’s Court both ruled that the trademark, when used on goods containing docosahexaenoic acid, was an objective representation of the ingredients of the designated goods and would not mislead the relevant public.
(b) The trademark ‘OLIMP HMB XPLODE’ was designated for Class 5 goods such as ‘protein supplements (containing the amino acid leucine); nutritional supplements (containing the amino acid leucine)’, with all goods limited to those containing the ingredient (HMB is the abbreviation for the amino acid leucine). This trademark was ultimately registered after a review.
The Draft Evidence Guidelines for Trademark Refusal Review Cases (for public comments) supports this approach, stating that disclaiming descriptive elements while limiting goods to those containing the ingredient generally avoids misleading the public.
The Guidelines state: ‘if the trademark contains descriptive terms indicating the ingredients, composition, function, or purpose of the designated goods, and the applicant clearly limits the designated goods while disclaiming exclusive rights to the non-distinctive parts of the trademark, the objective attributes of the designated goods will align with the meaning of the trademark. In such cases, it can generally be concluded that the registration and use of the trademark are unlikely to mislead the public.’
Although some evidence is still required even under these circumstances, this remains good news for applicants in China.
II. The ingredient name does not mislead the public
Determining whether a trademark is deceptive depends on the common knowledge of an average consumer. Even if the product does not contain the ingredient, the mark may still be registrable if the public, based on common knowledge, would not assume its presence.
Examples:
(a) The trademark ‘香草湖（Vanilla Lake)’ was designated for Class 33 goods such as ‘alcoholic beverages (except beer); liqueurs’. The Beijing Intellectual Property Court ruled that ‘Vanilla Lake’ should be evaluated as a whole and should not be deemed deceptive.
The court held that the use of the trademark on the designated goods would not mislead the relevant public into believing the goods contained vanilla. The trademark was registered.
(b) The trademark ‘小米（Millet)’ was designated for Class 32 goods such as ‘water (beverages); mineral water ingredients’. The Beijing High People’s Court ruled that, based on common sense, the public would not assume that goods like ‘water (beverages)’ contained millet simply because of the trademark. The use of the trademark on these goods was not deceptive.
Since interpretations of ‘the relevant public’s everyday experience or general knowledge’ can be subjective, whether such trademarks are deceptive may be debated on a case-by-case basis. Therefore, the registrability of such trademarks cannot be generalised and must be assessed based on each case.
In conclusion, for pharmaceutical or food trademarks containing ingredient names, the advisable strategies to overcome the refusal for deceptiveness are:
- Limiting goods to those containing the ingredient, or
- Demonstrating that consumers would not be misled due to the ingredient’s irrelevance.
By adopting these approaches, applicants can enhance the likelihood of successful registration in China.
Hui Zhuang is a trademark attorney at the CCPIT Patent and Trademark Office, specialising in trademark prosecution, opposition, invalidation, cancellation and trademark litigation. She can be contacted at: zhuangh@ccpit-patent.com.cn.
