Richard GAO
Trademark attorney, attorney-at-law
Trademark attorney, attorney-at-law
Only the trademark that complies with the Trademark Law can be registered. However the trademark must be used on specific goods or services. Therefore, in addition to complying with the relevant provisions of the Trademark Law, the use of a trademark shall also comply with the laws and regulations of the industry in which it is used. Cosmetics trademarks are a good example. The Regulations on the Supervision and Administration of Cosmetics and other related regulations serve as the primary legal framework for the supervision and administration of cosmetics in China. The purpose of these regulations and their specific provisions are different from the Trademark Law, for which the author shares the following suggestions.
- The designated goods need to be comprehensive and specific in trademark application
One of the main purposes of the Trademark Law legislation is to avoid confusion of the origin of goods by the relevant public. In China’s trademark registration, cosmetic products are classified into different sub-classes in accordance with their commonality in the function, use, raw materials used, sales channels, consumers and other aspects based on the Classification of Similar Goods and Services (hereinafter referred to as “the Classification”). For example, “non-medical bath preparations”, “essential oils”, “skin care make-up”, “toothpaste” and other products are classified into different sub-classes in Class 3. The “cosmetics” in sub-class 0306 of the Classification cannot fully cover the aforementioned goods. Such classification is also in line with the general public's perception of “cosmetics”.
Regulations on the Supervision and Administration of Cosmetics provides a broader definition of “cosmetics” in accordance with industry regulatory requirements: “cosmetics referred to in this Regulation are the chemical industrial products that are applied to the skin, hair, nails, lips and other human surfaces for the purpose of daily use to clean, protect, beautify, and decorate.” Soaps, shampoos, essential oils, and skin care products are cosmetics as defined by the Regulations on the Supervision and Administration of Cosmetics. The Regulations' supplementary provisions specify “toothpaste is regulated with reference to the provisions of the regulation on general cosmetics”.
Thus, the definition of “cosmetics” in the Regulations on the Supervision and Administration of Cosmetics is broader than that in the Classification. Therefore, cosmetic companies need to specify as many specific items as possible when applying for a trademark. This will not only allow for a greater scope of protection, but also can avoid the risk of inconsistency between the designated goods and the goods in actual use after trademark registration.
Regulations on the Supervision and Administration of Cosmetics provides a broader definition of “cosmetics” in accordance with industry regulatory requirements: “cosmetics referred to in this Regulation are the chemical industrial products that are applied to the skin, hair, nails, lips and other human surfaces for the purpose of daily use to clean, protect, beautify, and decorate.” Soaps, shampoos, essential oils, and skin care products are cosmetics as defined by the Regulations on the Supervision and Administration of Cosmetics. The Regulations' supplementary provisions specify “toothpaste is regulated with reference to the provisions of the regulation on general cosmetics”.
Thus, the definition of “cosmetics” in the Regulations on the Supervision and Administration of Cosmetics is broader than that in the Classification. Therefore, cosmetic companies need to specify as many specific items as possible when applying for a trademark. This will not only allow for a greater scope of protection, but also can avoid the risk of inconsistency between the designated goods and the goods in actual use after trademark registration.
- It is advised to register and use the trademark in Chinese
China's laws have no mandatory requirement on the registration of trademarks for cosmetics, but there are some specific provisions on the trademarks of cosmetics in the administration of cosmetic labels.
According to the Measures for the Administration of Cosmetics Labels and the Provisions on the Administration of the Materials of Cosmetics Registration and Recordal, standard Chinese characters shall be used in cosmetics label. Generally, the Chinese name of cosmetics in the label is composed of trademark name, generic name and attribute name. If the registered trademark in the Chinese name of cosmetics contains letters, Chinese Pinyin, numbers, symbols, etc., its meaning shall be explained on the visual area of the product's packaging. The registrant and recordal applicant of cosmetics label shall provide the trademark registration certificate when applying for the registration and recordal.
As can be seen from the above, the Chinese name of cosmetics should use standard Chinese characters in principle. If the trademark in cosmetics name uses letters, Chinese pinyin, numbers, symbols and other elements other than standard Chinese characters, the operator need to explain on the packaging and submit trademark registration certificate when registering and recording the product with the authority.
Therefore, it can be concluded that registering trademark name in Chinese for cosmetics labels can benefit the registrants and recordal applicant. Additionally, for consumers whose native language is Chinese, the trademarks in Chinese are often easier to recognize and remember, and the combination of Chinese and foreign language can often achieve better publicity and promotional effects.
Therefore, the author suggests that cosmetic companies prepare the trademark in Chinese early before carrying out business activities and use them when recording or registering cosmetics.
According to the Measures for the Administration of Cosmetics Labels and the Provisions on the Administration of the Materials of Cosmetics Registration and Recordal, standard Chinese characters shall be used in cosmetics label. Generally, the Chinese name of cosmetics in the label is composed of trademark name, generic name and attribute name. If the registered trademark in the Chinese name of cosmetics contains letters, Chinese Pinyin, numbers, symbols, etc., its meaning shall be explained on the visual area of the product's packaging. The registrant and recordal applicant of cosmetics label shall provide the trademark registration certificate when applying for the registration and recordal.
As can be seen from the above, the Chinese name of cosmetics should use standard Chinese characters in principle. If the trademark in cosmetics name uses letters, Chinese pinyin, numbers, symbols and other elements other than standard Chinese characters, the operator need to explain on the packaging and submit trademark registration certificate when registering and recording the product with the authority.
Therefore, it can be concluded that registering trademark name in Chinese for cosmetics labels can benefit the registrants and recordal applicant. Additionally, for consumers whose native language is Chinese, the trademarks in Chinese are often easier to recognize and remember, and the combination of Chinese and foreign language can often achieve better publicity and promotional effects.
Therefore, the author suggests that cosmetic companies prepare the trademark in Chinese early before carrying out business activities and use them when recording or registering cosmetics.
- The text in the trademark should comply with the relevant provisions
According to the provisions of Paragraph 1(7) of Article 10 of the Trademark Law, “Marks that are deceptive and likely to mislead the public about the quality and other characteristics of goods or their origin shall not be used as trademarks.” This provision is widely applied in practice as it is mainly intended to prevent trademark signs from deceiving and misleading the public and damaging the public interest.
However the laws and regulations of different industries have their own specific provisions on trademark. When it comes to cosmetics industry, Article 5 of the Regulations on Cosmetics Naming makes specific provisions on the naming of cosmetics.
The following terms are not permitted in cosmetics naming:
However the laws and regulations of different industries have their own specific provisions on trademark. When it comes to cosmetics industry, Article 5 of the Regulations on Cosmetics Naming makes specific provisions on the naming of cosmetics.
The following terms are not permitted in cosmetics naming:
- False, exaggerated and absolute words and expressions;
- medical terms, words and expressions that express or imply medical function and effects;
- well-known persons’ names in the medical field;
- words and local dialects that are difficult for consumers to comprehend;
- words and expressions that are vulgar or with feudal and superstitious meanings;
- names of approved drugs;
- foreign letters, Chinese pinyin, numbers, symbols, etc.
- and other words that mislead consumers.
Those indicating the sunscreen index, color number, series number, or registered trademarks and must-use foreign letters and symbols are excluded from the provisions of the preceding item (g).
Items (b), (c), (d), (f) and (g) in the aforementioned provisions are not specifically provided in the Trademark Law.
For example, for item (b), the Trademark Law does not strictly prohibit the registration of suggestive words as trademarks. In practice, on “cosmetics” and other goods in Class 3, trademarks containing the Chinese character “医 (medical)”, such as "医美克", "医美1号", "医净堂", "医舒白", "汉医光", "协医生" etc. are all approved for registration by the CNIPA.
However, Article 6 of the Regulations on Cosmetics Naming provides that: the trademark names of cosmetics are divided into registered and unregistered trademarks. Trademark names should comply with the relevant requirements of this Regulation.
Therefore, even if these trademarks containing the word "医" are registered, they may still not be used because they do not meet the requirements of the Regulations on Cosmetics Naming.
For example, in the case of Beijing Xieyikemei Medical Science and Technology Co., Ltd. suing Beijing Municipal Medical Products Administration and requesting the fulfillment of its statutory duties, the defendant Beijing Municipal Medical Products Administration disapproved the plaintiff's recordal application on the ground that the cosmetics named "Xieyi urea and vitamin E cream" for recordal implies medical functions and effects, violating the provisions of Paragraph 1 (b) of Article 5 of the Regulations on Cosmetics Naming. The plaintiff appealed and filed an administrative lawsuit. The court eventually dismissed the plaintiff's claim.
In addition, regarding names of well-known persons in the medical field, the Trademark Law does not prohibit applicants from registering and using names of well-known persons in the medical field as trademarks, except for marks that infringe on others' name rights or are likely to cause adverse effects. In reality, many trademarks containing names of ancient famous doctors have been approved for registration in Class 3, for example, Hua Tuo Ancient Soap, Bian Que Tong, Ge Hong Lao Fu Zi, etc. However, if these registered trademarks are used as part of a cosmetics name, they may be deemed violating the relevant provisions of the Regulations on Cosmetics Naming, and are therefore at risk.
In summary, cosmetics trademarks should comply with both the general legal provisions of the Trademark Law for the application and use of trademarks, and the specific regulations and requirements of the cosmetic industry. This requires cosmetics companies to properly register and protect their trademarks and to use them legally in compliance with the requirements of the industry. Be fully prepared for the trademark registration for cosmetics!
Items (b), (c), (d), (f) and (g) in the aforementioned provisions are not specifically provided in the Trademark Law.
For example, for item (b), the Trademark Law does not strictly prohibit the registration of suggestive words as trademarks. In practice, on “cosmetics” and other goods in Class 3, trademarks containing the Chinese character “医 (medical)”, such as "医美克", "医美1号", "医净堂", "医舒白", "汉医光", "协医生" etc. are all approved for registration by the CNIPA.
However, Article 6 of the Regulations on Cosmetics Naming provides that: the trademark names of cosmetics are divided into registered and unregistered trademarks. Trademark names should comply with the relevant requirements of this Regulation.
Therefore, even if these trademarks containing the word "医" are registered, they may still not be used because they do not meet the requirements of the Regulations on Cosmetics Naming.
For example, in the case of Beijing Xieyikemei Medical Science and Technology Co., Ltd. suing Beijing Municipal Medical Products Administration and requesting the fulfillment of its statutory duties, the defendant Beijing Municipal Medical Products Administration disapproved the plaintiff's recordal application on the ground that the cosmetics named "Xieyi urea and vitamin E cream" for recordal implies medical functions and effects, violating the provisions of Paragraph 1 (b) of Article 5 of the Regulations on Cosmetics Naming. The plaintiff appealed and filed an administrative lawsuit. The court eventually dismissed the plaintiff's claim.
In addition, regarding names of well-known persons in the medical field, the Trademark Law does not prohibit applicants from registering and using names of well-known persons in the medical field as trademarks, except for marks that infringe on others' name rights or are likely to cause adverse effects. In reality, many trademarks containing names of ancient famous doctors have been approved for registration in Class 3, for example, Hua Tuo Ancient Soap, Bian Que Tong, Ge Hong Lao Fu Zi, etc. However, if these registered trademarks are used as part of a cosmetics name, they may be deemed violating the relevant provisions of the Regulations on Cosmetics Naming, and are therefore at risk.
In summary, cosmetics trademarks should comply with both the general legal provisions of the Trademark Law for the application and use of trademarks, and the specific regulations and requirements of the cosmetic industry. This requires cosmetics companies to properly register and protect their trademarks and to use them legally in compliance with the requirements of the industry. Be fully prepared for the trademark registration for cosmetics!