The statutory provisions cited in a trademark refusal notice determine the room for argument and the response strategy for the case. This guide dissects the refusal provisions most commonly encountered in practice, setting out the determination standard, room for review, and concrete response recommendations for each.
1. Article 30: Similarity to a Prior Trademark (Relative Grounds)
Essence of the Provision
Where a trademark applied for registration is identical with or similar to another person's trademark that has been registered or preliminarily approved for the same or similar goods, the Trademark Office shall refuse the application and withhold publication.
Determination Standard
Examination applies a three-layer test of "similarity of marks + similarity of goods + likelihood of confusion":
- Similarity of marks: judged by the ordinary attention of the relevant public, combining overall observation with comparison of essential parts. For word marks, consider sound, appearance, and meaning; for device marks, composition and overall appearance; for combined marks, the distinctive identifying portion;
- Similarity of goods: based on the Classification of Similar Goods and Services, assessed comprehensively with function, purpose, production sector, sales channels, and consumer groups;
- Likelihood of confusion: the stronger the distinctiveness and the higher the reputation of the cited trademark, the broader its scope of protection.
Room for Review: ★★★★
Response Strategies
- For pure word marks with a different first character, focus on "phonetic and visual differences";
- Where the meanings are clearly different, argue "conceptual distinction";
- Where the goods span different subclasses, argue "the goods are not similar";
- Where the cited trademark has been registered for three years, file a non-use cancellation in parallel;
- Submit your own use evidence to prove that the market has in fact differentiated the marks.
2. Article 10(1): Prohibited Signs
Items (1) and (2): State Symbols and International Symbols
Signs identical with or similar to state names, national flags, national emblems, military flags, medals, etc. are absolutely prohibited. Room for review: none. Abandon directly, amend the sign, and refile.
Item (7): Deceptiveness
Signs that are deceptive and likely to mislead the public as to the quality or other characteristics or the place of origin of the goods. Typical examples include "Organic" on non-organic products, or a place name implying an inconsistent origin.
Room for review: ★★. Key arguments: at the perception level of the relevant public, the association between the sign and the characteristics of the goods is insufficient to mislead; or the sign is a hyperbolic expression that the public would not take literally.
Item (8): Adverse Effects
Signs detrimental to socialist morals or customs, or having other adverse effects. This covers political sensitivity, pornographic or violent implications, and malicious exploitation of major public events.
Room for review: ★. The examination standard is rigid and tightening; unless the determination is clearly erroneous (e.g., the sign genuinely has another legitimate meaning recognized by the mainstream), review is not recommended.
Article 10(2): Place Names
Place names of administrative divisions at or above the county level, or foreign place names known to the public, may not be registered, except where the place name has another meaning or forms part of a collective or certification trademark.
Room for review: ★★★. Key argument: the overall meaning of the sign outweighs its place-name meaning (e.g., words like "Phoenix" or "Huangshan" that have other mainstream meanings), and the relevant public's first association is not the place name.
3. Article 11: Distinctiveness
Essence of the Provision
- Item (1): signs consisting only of the generic name, device, or model number of the goods;
- Item (2): signs that merely and directly indicate the quality, principal raw materials, function, intended use, weight, quantity, or other characteristics of the goods;
- Item (3): other signs lacking distinctive character.
Proviso: the signs above may be registered as trademarks if they have acquired distinctive character through use and are readily identifiable.
Nuances of the Determination Standard
- "Generic names" are essentially unresolvable — words commonly known and used in the industry can never enter the register;
- There is a grey zone between "merely and directly indicating" and "suggestive": suggestive signs (requiring imagination to connect to the goods' characteristics) are distinctive and arguable;
- Overly simple lines, ordinary advertising slogans, and single letters or numerals often fall under Item (3).
Room for Review: ★★★ (with use evidence)
Response Strategies
- Argue that the sign is suggestive rather than directly descriptive;
- Submit a use evidence chain spanning multiple years, regions, and substantial scale before the filing date (contracts, invoices, advertising, coverage, survey reports);
- The evidence must show the sign used in its original form — altered use is heavily discounted;
- Where the evidence is insufficient, redesign the trademark (add original elements) and refile.
4. Article 4: Bad-Faith Applications
Essence of the Provision
Trademark registration applications filed in bad faith without intent to use shall be refused.
Triggering Situations
Filing large numbers of applications in a short period, filing volumes clearly exceeding the scale of business operations, imitating others' well-known marks, and hoarding trending words.
Room for Review: ★★–★★★ (depending on evidence)
Response Strategies
- Submit evidence of actual use or preparations for use;
- Explain the reasonableness of the filing volume by reference to business scale and business layout;
- Explain the creative origin of the sign to dispel any suspicion of imitation;
- Clean up idle trademarks under your name to reduce the appearance of hoarding.
5. Other Frequently Cited Provisions
Article 12: Functionality of Three-Dimensional Signs
Shapes resulting solely from the nature of the goods themselves, or necessary to obtain a technical effect, may not be registered. Room for review: ★. Unless the non-functionality and arbitrariness of the shape can be demonstrated.
Extension Related to Article 10: Conflict with Prior Well-Known Trademarks
Imitating a well-known trademark in a way that misleads the public (Article 13) will not be registered. Room for review: ★★, depending on the case-specific findings on the degree of fame and similarity.
Article 19(4): Self-Filing by Agencies
Trademark agencies' applications for trademarks other than their agency services will not be accepted. Reminder to applicants: when engaging an agency, confirm that the applicant entity is compliant.
6. General Decision Framework
After receiving a refusal notice, analyze in the following order:
- Characterize: relative grounds or absolute grounds;
- Locate the provision: pin down the specific item, and check it against the review-room ratings above;
- Take stock of resources: what evidence is available, and what vulnerabilities does the cited trademark have;
- Calculate the cost: whether the review investment matches the value of the trademark;
- Set the strategy: review / review + non-use cancellation / dual-track filing / abandon and rebrand.
Conclusion
The same refusal ground can carry wildly different odds of reversal in different cases. The statutory provisions are only the map; the evidence is the ammunition. Dissecting the refusal ground down to the specific item and completing the evidence chain to the point of being unassailable is the unchanging formula for responding to any refusal.
7. Service Entry Point
If you need assistance with the process above, you may book a refusal review assessment service with a registered trademark agent on MyTMBee, covering everything from material preparation to filing and follow-up.