When assisting international companies entering the Chinese market, one of the most common and challenging issues we face involves registering trademarks that include or reference foreign country names. At first glance, the legal framework seems contradictory. Public campaigns and general knowledge of intellectual property law have taught many that a trademark identical or similar to the name of a foreign country shall not be used. This rule, enshrined in law, appears absolute. If such marks cannot be used, it logically follows that they cannot be registered either.
However, a quick look at the Chinese market and global trade reveals many successful and seemingly conflicting examples. Trademarks like NATURAL POLAND (referring to Poland), American Standard (referring to the USA), and Guomei (a near reversal of the Chinese characters for America) are not only in use but have also been officially registered in China. This naturally raises a key question from clients: How is this possible? Why do some applications pass examination smoothly while others, even from well-known multinational companies, encounter insurmountable barriers despite lengthy legal battles?
Concerns about inconsistent application of the China Trademark Law—one rule for one company, another for a different one—are understandable. Yet, our extensive experience confirms this is not the case. The law is applied consistently and fairly. Different outcomes arise not from arbitrary decisions but from the specific facts and evidence presented in each case.
Success depends not on the applicant identity but on a sophisticated, strategic application approach grounded in a thorough understanding of legal subtleties. Here, we analyze this complex area through seven real cases handled in China legal system. Our goal is to clarify the three main routes to successfully registering a trademark containing a foreign country name, turning what seems like a prohibitive rule into a manageable legal challenge.
Route One: Obtaining Explicit Consent from the Foreign Government
The clearest exception to the general ban is stated in Article 10(1)(2) of the China Trademark Law: …except with the consent of the government of the foreign state concerned. This offers a direct, though demanding, path to registration. If an applicant can provide valid, verifiable proof that the foreign government referenced in the mark has consented to its registration, the mark has a strong chance of approval—even if identical or similar to the country name.
Though straightforward in theory, this route requires rigorous proof. The standard for valid government consent is high, and the evidentiary burden is significant. To illustrate, consider two cases: one a clear success, the other a cautionary failure.
Success: The NATURAL POLAND Case
In January 2017, we represented a Polish company applying for the English trademark NATURAL POLAND with China Trademark Office. As expected, the application was initially rejected in November 2017 for violating Article 10(1)(2). We had advised the client that initial rejection was likely since the office typically does not consider background context at first. The real challenge would be in the review phase.
Prepared in advance, we submitted official Polish government authorization for the mark registration and provided a verifiable channel for the Chinese authorities to confirm this directly. This strategic approach led to approval by the Trademark Review and Adjudication Board (TRAB) in June 2018, about 18 months after filing. This case shows that with foresight and proper evidence, the government consent path is viable and efficient.
Failure: The American Express Case
Conversely, a well-known American financial company applied in November 2017 for the Chinese mark 美国运通. The application was rejected under Article 10(1)(2), and despite appeals and litigation up to the Beijing Higher Court, the final judgment in January 2021 upheld the rejection.
The court noted that submitting a U.S. trademark registration certificate alone did not prove U.S. government consent for the Chinese mark. The court emphasized that prior approvals of similar marks do not guarantee automatic acceptance. After nearly four years, the application failed.
Key Lessons from the Consent Route:
- The trademark submitted in China must exactly match the mark approved by the foreign government. In the American Express case, the evidence related to the English mark, but the application was for the Chinese version—this mismatch was fatal.
- The goods or services listed in the Chinese application should closely align with those covered by the foreign government’s consent. Significant differences can undermine the claim.
Route Two: Showing a Distinct, Non-Geographical Meaning That Does Not Mislead Consumers
The second path applies when a mark containing or referencing a country name has a dominant meaning unrelated to geography, which the public recognizes more readily than the country reference. Additionally, it must not likely confuse consumers about the product origin.
Examples include Guomei,TURKEY, and FRANK. For instance, TURKEY is the country name in English but commonly known in China as a bird. FRANK resembles FRANCE but is more commonly understood as a personal name or adjective meaning sincere. This secondary meaning can outweigh the geographical association.
Success: The Guomei Case
In 2015, an individual applied for the Chinese trademark Guomei (国美) for alcoholic beverages. Despite opposition and invalidation attempts, the mark was upheld by the Beijing Higher Court in 2020. The court recognized that Guomei is commonly interpreted as beautiful country, a meaning consistent with Chinese language usage, and no official evidence showed it as a short form for America. The applicant also submitted a U.S. registration certificate for Guomei, supporting the mark distinctiveness.
Failure: The Jian Li Mei Case
Inspired by Guomei, another applicant tried Jian Li Mei (坚利美), a rearrangement of the characters in 美利坚 (America formal Chinese name). The application was rejected and ultimately denied by the Beijing Higher Court. The court found the mark visually resembled 美利坚 and lacked a distinct secondary meaning, making it inadmissible without government consent.
Failure with Nuance: The AMERICAN EAGLE Case
A UK gin company applied for AMERICAN EAGLE in 2018. The Beijing Higher Court ruled in 2021 that the mark was not identical or similar to a country name, so it did not violate Article 10(1)(2). However, the court sent the case back to the Trademark Office to assess whether the mark might mislead consumers about the product origin, since the applicant was British, not American. This case highlights that even if a mark clears the country name similarity test, it can still be rejected if it causes confusion about origin.
Route Three: Using the Country Name Solely as a Descriptive Indicator of Origin or Characteristic
The third, more subtle path involves marks where the country name is not the dominant element but is used truthfully and descriptively to indicate the applicant nationality or a genuine product characteristic. Two strict conditions apply:
- The country name must be visually and conceptually separate from other distinctive elements of the mark.
- The country name must serve a truthful descriptive purpose, such as indicating origin or a product feature.
Success: The MADE IN ITALY Case
In 2011, an Italian applicant filed a complex mark including PRODOTTO NATURALE (Natural Product), ITALIANO (Italian), and MADE IN ITALY. Initially rejected for similarity to ITALIA and lack of distinctiveness, the mark was approved on review in 2014. The key was the layout: the geographical terms were placed separately and truthfully indicated the applicant nationality and product origin without causing confusion.
Failure: The APMMONACO Case
A Monaco-based company applied for APMMONACO in 2019. The Beijing Intellectual Property Court ruled the mark combined the arbitrary APM with the country name MONACO into a single unit without forming a new, distinct meaning. Because it lacked a separate descriptive use and secondary meaning, the application was denied.
Conclusion: Consistency Through Nuance
The seemingly conflicting results in trademark cases involving foreign country names do not reflect an arbitrary or unfair system. Instead, they demonstrate a consistent, nuanced application of the law. The China Trademark Law requires careful interpretation and strategic navigation. The success of marks like NATURAL POLAND, Guomei, and MADE IN ITALY stems from deliberate strategies based on one of the three routes: obtaining explicit government consent, proving a dominant, non-misleading secondary meaning, or using the country name truthfully and descriptively in a distinct way.
For international businesses seeking trademark protection in China involving country names, success demands more than filing an application. It requires deep legal understanding, thorough evidence preparation, and a tailored strategy based on the mark’s composition and the applicant’s profile. While the law applies equally to all, achieving a favorable outcome depends on skillfully navigating its complexities. Expert legal advice is therefore essential to help your brand overcome these challenges and secure the protection it deserves in China dynamic market.