Distinctiveness, also called distinctive character, is the characteristic of a sign that enables the relevant public to distinguish the source of goods or services. It is not an evaluation of whether the sign is "attractive" or "creative," but a functional requirement: can the sign tell consumers "whose product this is." Distinctiveness is a substantive requirement for trademark registration and the core variable determining the breadth of trademark protection.
The Legal Status of Distinctiveness
- Article 9: a trademark applied for registration shall have distinctive features, be easy to identify, and shall not conflict with prior lawful rights obtained by others. This is the general provision making distinctiveness a substantive requirement for registration;
- Article 11: enumerates signs that may not be registered as trademarks—signs consisting solely of the generic name, device, or model of the goods; signs merely directly indicating the quality, main raw materials, function, intended purpose, weight, quantity, or other characteristics of the goods; and other signs lacking distinctive features—while opening a door in its second paragraph: signs listed in the preceding paragraph that have acquired distinctive features through use and are easy to identify may be registered as trademarks.
Read together, the legislative logic is clear: distinctiveness is both a threshold and a threshold that can be crossed. Signs lacking inherent distinctiveness are not forever without opportunity—but they can only speak through use.
Source Identification Is the Sole Criterion
When assessing distinctiveness, common surrogate standards are easily misapplied: whether the sign is original, attractive, designed by the applicant, or covered by copyright registration. None of these is the standard of trademark law.
The correct question is: when the relevant public sees the sign used on the designated goods or services, will they naturally understand it as a source identifier, rather than reading it as a product name, a description of characteristics, industry jargon, or a slogan? If the answer is the latter, distinctiveness is lacking.
The Relativity of Distinctiveness
Distinctiveness is not an inherent attribute of a sign; it is the product of the relationship among "sign—goods—public":
- Relative to the designated goods or services: the same word can yield opposite conclusions on different goods. A word wholly unrelated to the goods is highly distinctive; a word pointing directly to the characteristics of the goods is weak;
- Relative to the relevant public: the standard is the ordinary cognition of consumers and operators of the goods or services in question—neither an expert perspective nor that of the general public.
The Strength and Dynamics of Distinctiveness
Strength Determines the Scope of Protection
Distinctiveness correlates positively with the scope of protection:
- The stronger the distinctiveness (coined or arbitrary words), the broader the scope of protection, and the more easily others' slightly similar marks are found similar;
- The weaker the distinctiveness (suggestive signs, descriptive signs registered on the strength of use), the narrower the scope of protection, and effective enforcement usually requires evidence of fame;
- In assessing similarity and confusion, the stronger the distinctiveness and fame of the prior trademark, the more readily the rights claim is supported.
Distinctiveness Changes
Distinctiveness is dynamic: it can come from nothing (Article 11(2)), and it can go from something to nothing. Where a registered trademark becomes the generic name of its designated goods, its distinctive character is lost, and under Article 49(2) any entity or individual may apply to CNIPA for cancellation of the registration.
Practical Points
At the naming stage, prefer coined words or arbitrary words unrelated to the goods, guaranteeing distinctiveness at the source. For names that lean descriptive, assess before filing the evidence reserves needed to acquire distinctiveness through use. After registration, keep using the trademark in a standardized way, do not use the trademark as a product name, and stop others promptly when they use the trademark generically, to prevent dilution and loss of distinctiveness.
How these concepts apply in specific cases still involves detailed differences; you may consult a registered agent via MyTMBee for case-specific analysis.