Can intangible cultural heritage names be registered as trademarks?
Updated 18:33, 13-Nov-2020
Zhang Can

Editor's note: Zhang Can is an assistant judge at Beijing Intellectual Property Court. The article reflects the author's opinions, and not necessarily the views of CGTN.

Attempts by individuals and businesses to register as trademarks the names of intangible cultural heritage (ICH) items, which reflect the fine traditional culture of the Chinese nation, have provoked a bitter controversy.

Some argue that once the ICH has been listed in the catalog of national or local representative ICH items, it enters into public domain and becomes a public cultural resource. As a result, one cannot register a public cultural symbol as his/her own trademark. 

Others hold a different view: that the name of a certain representative ICH item can be applied for trademark registration as the Chinese Trademark Law doesn't explicitly prohibit trademark registration related to ICH. As long as such a trademark application doesn't go against any provisions of the Trademark Law, it can be registered as lawful trademarks.

Legal issues concerning the intersection of intellectual property rights and ICH are extremely complicated. The protection mode of expressions of folklore, another way of saying ICH, is still under discussion. On some occasions, the expression of folklore can constitute works of authorship according to copyright law.

For example, if a Beijing opera mask meets the standard of originality, it could be regarded as a work of fine art and be protected under copyright law. But some forms of expressions of folklore, such as traditional rituals, sports and folk customs do not fit the definition prescribed in copyright law, and thus they cannot be protected by copyright law. So legal experts are calling for a specific protection regime for cultural expression forms that have substantial historical and artistic value. 

There is not a fixed and clear standard for judging whether a name of a representative ICH item is trademark registrable or not. Theoretically, to register a name of ICH does not contradict the goal of preserving and protecting it as, sometimes, adopting modern business methods, like advertising, brand making and marketing, can help revitalize traditional cultural resources.

And in a relevant judgement regarding infringing the trademark "Gufang" on brown sugar, the Supreme People's Court held that there is not a conflict between including the "Gufang brown sugar production process" in the catalog of provincial representative ICH items and accepting the registration application of "Gufang" trademark on brown sugar. Whether "Gufang brown sugar" can be registered as a trademark depends on its compliance with relevant provisions of the trademark law.

"Gufang" brown sugar. /Xinhua

"Gufang" brown sugar. /Xinhua

Although the Intangible Cultural Heritage Law of China was promulgated in 2011, it focuses more on the protection and inheritance of ICH by administrative means, such as setting up an effective ICH investigation mechanism, establishing the catalog of representative ICH items at national and local level to include those ICH with significant cultural value for protection and providing places and financial aids to representative predecessors for carrying out of inheritance activities.

Undoubtedly, these measures have greatly enhanced and facilitated the preservation and protection of ICH across the country. But, in order to lift the protection of ICH to a new level and let them really make a difference in the building of socialist civilization, depending only on governmental effort and financial subsidy is not enough. For the ICHs manifest themselves in diversified forms and are scattered among the people, we need to mobilize the massive public to give full play to their creativity and vitality.

During the process of ICH preservation and protection, we hope to see more cultural enterprises come out to boost the industry and more cultural products embodying historical and artistic value to be developed. Intellectual property rights have an important role to play in this regard.

The ICH law and IP law actually can work jointly and complementarily. Just as article 44 of the ICH Law stipulate that where intellectual property rights are involved in the ICH usage, the provision of the relevant law shall apply. Therefore, as to whether the name of a representative ICH item is registrable, we need to turn to specific provisions of the trademark law. In practice, the essential issue in trademark disputes related to ICH lies in its distinctiveness.

The distinctiveness issue means a trademark must be distinct in terms of its function of identifying different sources of goods. If a trademark is a generic term for a type of goods or directly describes the quality, raw material or feature of the goods on which it is to be registered, it cannot indicate the specific provider of the said goods and thus cannot meet the requirement of distinctiveness. Specifically, in trademark cases relating to ICH, the defendant would usually claim that once the ICH has been included in the catalog of representative ICH items, it has become generic or at least is descriptive, thus cannot be registered as a trademark anymore.

Basically, there are two types of common name: one is a legal commodity name and the other is a commodity name established by usage. The name of representative ICH item cannot constitute a legal commodity name. Although it is theoretically possible to become a common name "established by usage," which means the "relevant public" generally believes that it is able to refer to a category of goods, it seldom happens in reality for the scope of the "relevant public" is nationwide and there has not been a representative ICH item of that national impact so far.

With the intrinsic nature of locality and ethnicity, the ICH is prevalent in a certain place or among a group of people. That's why in judicial practice few names of ICH have been regarded as a common name "established by usage" in trademark case related to ICH.

Nevertheless, the court is very likely to consider a name of ICH to be descriptive, thus lacking distinctiveness. For instance, in the case of "eight diagnoses of soup bottle," the court held that when the relevant public see "eight diagnoses of soup bottle" on the service of message, they are likely to regard it as a kind of healthcare therapy with the characteristics of Hui nationality, instead of as a trademark. On the contrary, in the above case of "Gufang brown sugar," the court held that to use "Gufang" on brown sugar is not descriptive, thus it has a distinctive feature and shall be a valid trademark.

In a nutshell, the judgement of whether the name of ICH is trademark registrable is a sophisticated legal issue, which involves not only the analysis of the relationship between ICH and IP, but also the specific application of trademark registration rules pertaining to distinctiveness, descriptiveness and common name. Therefore, we can only adopt a case by case approach to solve this problem.

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