CHINA Trends and Developments Contributed by: Qiang Ma, Yi Xu and Lei Wu, Jingtian & Gongcheng
the application process to avoid potential issues. If the trade mark includes suggestive elements that point to the characteristics of the goods or services, it may indicate the name of those goods or services. This could lead to complications such as office actions, which may require revisions to meet standardised expressions. In addition, it is advisable to clearly state that the trade mark is suggestive, arbitrary or bor - derline in nature and to include a brief explanation in the “Trademark Design Description” section of the application form. This can help clarify the trade mark’s intent and distinctive nature, which could be benefi - cial during any future refusal review proceedings if the trade mark is rejected. The CNIPA has been called upon to establish specific examination standards for suggestive marks so they can be clearly distinguished from descriptive and misleading ones, ensuring a clearer path for applicants. The confusion in distinguishing distinctive and non-distinctive elements of trade marks during the examination of similarities of marks; unacceptable coexistence agreements or consent letters A trade mark can comprise both distinctive and descriptive elements that refer to the associated goods or services, the latter often referred to as the non-distinctive portion of the trade mark. According to Article 59.1 of the Trademark Law, if a registered trade mark includes generic names, images or models of goods, or directly indicates attributes such as quality, main materials, functions, uses, weight or geographi - cal locations, the rights-holder cannot prevent others from using it in a legitimate manner. This provision implies that trade marks may contain both generic and descriptive components. It is crucial to evaluate a trade mark’s distinctive - ness in its entirety, recognising that non-distinctive elements should be excluded or minimised when assessing trade mark similarity. However, the CNI - PA’s 2021 Guidelines for Trademark Examination and Trial, particularly Article 3.4.1, known as the “Lack of Distinctiveness Clause”, posits that if a trade mark consists of independent text and graphics, and the text is deemed non-distinctive, the entire trade mark is considered lacking in distinctiveness. This interpreta - tion continues to create challenges for well-designed combined trade marks, hindering businesses’ ability
to compete effectively in the market with these essen - tial branding tools. In distinguishing between distinctive and non-distinc - tive features of trade marks, CNIPA examiners often face challenges when comparing new applications with prior trade marks. A notable example is the trade mark “TravelDepot”, which is applied for “travelling bags” in Class 18. Here, “Travel” lacks distinctive - ness, as it is commonly used to describe the nature of goods. For businesses, incorporating the term “Travel” in their trade mark can be a logical strategy to establish a connection to the products they offer. However, when examiners reject trade marks like “TravelDepot”, they frequently reference numerous existing marks that include “Travel” without acknowl - edging the reasonable coexistence of these trade marks. They often overlook that “Travel” serves a functional purpose, directly related to the nature of “travelling bags”. This tendency to reject such trade marks not only impedes market players’ ability to compete fairly but also leads to inefficient use of judi - cial resources in subsequent legal challenges. In recent years, particularly from 2022 to 2025, the CNIPA and courts have shifted their approach regard - ing the acceptance of coexistence agreements or consent letters. This change comes on top of already stringent trade mark similarity examinations, further complicating the process for market entities look - ing to register trade marks. As a result, these entities often resort to using their marks as unregistered trade marks, changing their marks entirely, or navigating a lengthy three-year non-use cancellation procedure just to overcome obstacles to registration. Notably, China stands out among the TM5 countries – China, the United States, EU, Japan and South Korea – as the only nation that now does not recognise consent letters in trade mark practices. Draft Amendment to PRC Trademark Law The Draft Amendment to the Trademark Law was submitted to the Standing Committee of the 14th National People’s Congress for deliberation on 22 December 2025. It primarily addresses key issues such as malicious registration, hoarding, infringement and improper use, aiming to strengthen regulations
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