Trademarks with vulgar meaning may be invalidated in the PRC

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Introduction

On 3 February 2019, the Higher People’s Court of Beijing Municipality (“Beijing High Court”) handed down its judgment and determined that the trademark “MLGB” had a vulgar meaning, was of low style, and may endanger the socialist morality; and therefore shall be invalidated in accordance with Article 10(8) of Trademark Law of the People’s Republic of China (the “Trademark Law”).

Background

Invalidation of a trademark

Under PRC laws, anyone who wishes to oppose a trademark which has already been approved by China Trademark Office can initiate a separate procedure by filing for invalidation with the Trademark Review and Adjudication Board (“TRAB”). A registered trademark may be invalidated if it falls within any prohibited circumstance stipulated under the Trademark Law.

The Disputed Trademark

On 15 December 2010, Shanghai Junke Commerce Limited Company (上海俊客貿易有限公司) (“Shanghai Junke”) applied for registration of the trademark “MLGB” (the “MLGB Mark”) and the application was approved for registration on 28 December 2011. The MLGB Mark was approved for use on Class 25 goods, including clothing, wedding dress, shoes, hats, socks, ties, scarves, belts (for clothing), sportswear and baby’s full suits.

One Mr Yao Hongjun filed an application to TRAB for invalidation of the MLGB Mark, based on Article 10(8) of the Trademark Law which states that signs which are detrimental to the socialist moral customs or having any other negative impact on the society shall not be used as trademarks.

TRAB’s Decision

On 9 November 2016, TRAB held that although Shanghai Junke argued the meaning of “MLGB” is “My Life’s Getting Better”, the evidence submitted could not prove that this meaning had been widely recognised by the public. On the contrary, the public was more likely to recognise “MLGB” as an uncivilized term. The combination of letters of “MLGB” is widely used on social platforms such as the Internet as an abbreviation of a vulgar Chinese expression. It has vulgar meanings, is of low style and is harmful to the socialist morality and customs. It may be easy to cause adverse effects on the society and therefore it shall be declared invalid.

Dissatisfied with TRAB’s decision, Shanghai Junke filed an administrative lawsuit with Beijing Intellectual Property Court of the First Instance (“BJIPCFI”).

Shanghai Junke further provided, among others, evidence showing that “MLGB” has also been approved for registration for Class 45 services, and therefore TRAB should follow the same standard in determining the disputed trademark in accordance with the principle of legal certainty in administrative law.

On the other hand, Mr Yao produced further evidence showing that Shanghai Junke has also applied for trademark “caonima” at the same time when apply for the MLGB Mark. When consider the two trademarks together, both of which seems to be connected with vulgar meanings, it is likely that Shanghai Junke had malicious intentions during the applications.

BJIPCFI’s Judgment

There are different opinions on whether “MLGB” is detrimental to the socialist moral customs or having any other negative impact on the society. One of the key points is whether the understanding of the targeted groups, who are familiar with the internet, amounts to impact on the general public.

Nevertheless, BJIPCFI held that word combinations with new meanings, including the replacement of Chinese vocabulary with Pinyin letters, are constantly emerging. The habits, styles and ways of language use under the internet environment have formed their own distinct characteristics, and even formed a relatively fixed meaning of internet language in a specific group, and gradually integrated into people’s daily language environment, resulting in new words or meanings widely accepted by the society.

BJIPCFI further held that there was no evidence that the abbreviation of “My Life’s Getting Better” as claimed by Shanghai Junke is a common expression in English. There was no evidence that this abbreviation is known to the public or can dispel the disgust caused by the uncivilised meaning of “MLGB” (as a vulgar Chinese expression). Internet social networking had increasingly become an indispensable part of teenagers’ lives, especially their strong sense of novelty hunting and rebellion. “MLGB” was used on clothing, shoes and hats and other commodities, which were targeting mainly on teenagers who are at the important stage of forming their moral values.

BJIPCFI upheld the decision of TRAB. Shanghai Junke further appealed to Beijing High Court.

Beijing High Court’s Final Judgment

Beijing High Court concluded four elements in assessing whether the disputed trademark “MLGB” falls within the limb of “any other negative impact” under Article 10(8):

  1. The target group under consideration shall be the “general public”;
  2. The timing under consideration shall be at the time when apply for the trademark registration;
  3. The meaning of certain words shall be evaluated in accordance with the meanings given by authoritative sources or common sources widely available to the public; and
  4. The opponent of the trademarks registration shall bear the burden of proof.

Beijing High Court held that although “MLGB” was not a fixed foreign language vocabulary, certain groups have already considered “MLGB” having vulgar meaning. There are a large number of internet users and the relationship between the internet and general public is close. The court has a duty to prevent the prevalence of vulgar culture. The court considered that “MLGB” had a negative meaning and was of low style. Further, Shanghai Junke had intention to cater to vulgar cultural tendencies in applying for trademarks such as “caonima”, and the manner in which they promoted “MLGB” was vulgar too.

Therefore, Beijing High Court rejected the appeal and upheld the original decision, that “MLGB” shall be invalidated.

Conclusion

The PRC court’s interpretation of Article 10(8) of the Trademark Law now recognises vulgarity as a valid reason which may lead to invalidation of a trademark. Practitioners and individuals are reminded to bear in mind that the internet is a constantly changing environment where new internet expressions are being formed on a daily basis. Certain internet language can exert influence on the cognition of the general public, and where the PRC courts consider such influences to have a negative effect, they will indeed ensure that their moral values are upheld to protect the mind set and socialist values of teenagers.

 

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Important: The law and procedure on this subject are very specialised and complicated. This article is just a very general outline for reference and cannot be relied upon as legal advice in any individual case. If any advice or assistance is needed, please contact our solicitors.
Published by ONC Lawyers © 2019