For trademark applicants who want to apply for trademarks with geographical names in China, they may meet difficulties because geographical names, such as names of foreign countries, cities, counties, or areas are prohibited to be used as a trademark under the Chinese Trademark Law.
 
According to article 10.1.2 of the Trademark Law, the signs identical with or similar to the name, national flag, national emblem, or military flag, among others, of a foreign country may not be used as trademarks except as permitted by the government of the foreign country. Also as prescribed in article 10.2, the name of any administrative division at or above the county level or the name of any foreign place known by the public may not be used as a trademark.
 
The reason for the prohibition involves several aspects, including the interests of using the geographical names by the public, the achievement of a trademark’ function of identification, as well as the differences between the geographical names and origins of goods or services that confusing the public.
 
However, not all of the signs containing a foreign geographical name are prohibited. What if the geographical name is so necessary? Are there any exceptions to registrations?
 
Exceptions to trademark registration of geographical names

One of the reasons for not allowing a sign containing a geographical name to be used as trademarks is that this kind of sign may devoid of distinctiveness and not indicate the origin of related goods/services clearly, or mislead the public about the characteristic of the related goods/services. But in the actual use, if the public hasn’t met that confusion or difficulty to identify the source as well as correctly understand the character of designated goods, then the signs shall be registered ideally.
 
Hence, there are exceptions to the prohibition. Where a trademark complies with one of the following circumstances, it may be affirmed to be registrable as a trademark.
 
a. the geographical name is not well-known by the relevant public.

Sometimes, whether a foreign geographical name can be used in a trademark depends on its fame in China. According to the provision, all levels of administrative divisions of names of foreign places fall into the regulation. The determination of fame does not simply depend on the level, even the name of a small county or street, as long as it’s familiar to the public in China, it will probably be prohibited to use in a trademark. Otherwise, if the geographical name in the trademark is not well-known to the relevant public, which means the customers will not always associate the relevant goods or services to the certain foreign places when recognizing the sign,     then the above situation of confusion may not appear during the actual use of the trademark, and the sign has the chance of being allowed to use as a trademark.
 
Also, while a foreign geographical name being used in the domestic environment, the expression as well as the writing may have changed due to pronunciation or transliteration, which may result in the discrepancy of fame between the real foreign place and its foreign name from the Chinese customers’ aspect. Taking the No. 5356237 SHIMIZU trademark as an example, SHIMIZU is the name of a Japanese city and is known as the place where the story of the famous carton Chibimaruko Chan takes place. However, audiences and customers in China used to know the name in Chinese “清水” instead of the English expression SHIMIZU. During the trial, the court denied the fame of “SHIMIZU” among Chinese customers and rule in favor of the trademark applicant. Therefore, the sign was allowed to be registered as a trademark ultimately.
 
b. The trademark includes other elements that differ its whole meaning from a geographical name.

Even if the geographical name is well-known to the public to some extent, it could be included in a trademark under certain circumstances. If a sign indicates a whole different meaning from the geographical name, or it merely signifies the real location of the applicant, the trademark is possibly to be allowed.
 
According to the Standard of Trademark Examination, trademarks that contain foreign geographical names and other words but have other meanings as a whole, and will not cause the public to misidentify the origin of the goods, can be registered as a trademark.
 
Also, according to the later part of article 10.2, collective marks or certification marks are not prohibited to contain a geographical name, because they are often with the function of providing certification or indication that the designated products or services meet a certain regional standard or carrying geographical features.
 
c.The trademark has obtained distinctiveness by long-term commercial use, which would not confuse the relevant public.
 
The third circumstance is similar to the second one which the key point is that the sign shall have a meaning that is different from the geographical name and is distinguishable in the relevant market. If a trademark has been used on designated goods or services for a certain period and acquired its distinct meaning among the public, and customers are able to identify it as a provider of goods or services instead of the foreign places. The second meaning of the trademark should be significant and stable, which suffices the trademark function of identification. The determination of the second meaning of a trademark always requires a large amount of use evidence and supportive documents on its fame.
 
Disclaimer on the exclusive right of the geographical name

The registrability means conformance to the requirement of trademark registration. However, the exclusive right of a registered trademark may be different from a common trademark. As public resources, a geographical name cannot be the subject of a private right, including the exclusive right of trademark. Hence, at the request of the trademark office, the applicant should disclaim the exclusive right of the part of the geographical name in the trademark. In practice, CNIPA will issue an Office Action to demand a disclaimer. The geographical name will not be deleted after disclaiming but will influence the exercise of exclusive rights that the trademark owner does not have the right to stop others from using the geographical name.