ICH protection and trademark registration

By Michael Liu, Dentons
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After the Ministry of Culture initiated the protection of the production of intangible cultural heritage (ICH), more and more ICH items have been commercialized through production, sales and circulation. A trademark, as a name card of a company, can play a helpful role in the protection of the production of ICH items.

Applying for trademark registration for an ICH item is a critical method for the company to maintain its competitive edge, but it can create many disputes. A typical case is the case of the “eight-method bottle diagnosis” technique (please refer to the civil judgement No. 1479 (2016) of Beijing High People’s court for details).

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Michael Liu
Senior Partner
Dentons

The “eight-method bottle diagnosis of Hui ethnicity group” was awarded as a national ICH. Yang Huaxiang, as the seventh generation of the inventor of this ICH item, applied for and obtained the trademark for the eight-method bottle diagnosis technique on 21 February 2007.

However, the trademark was annulled by the Trademark Review and Adjudication Board on 29 April 2015. Refusing to accept the decision, Yang initiated an administrative proceeding. His claim was overruled by the first instance at Beijing Intellectual Property Court and the second instance at Beijing High People’s Court.

This begs a question: Is an ICH item eligible for trademark registration? If the answer is yes, then what conditions should be fulfilled? The author will analyze these questions by illustrating this case.

ICH is a presentation of traditional cultures that are passed down generation after generation among different ethnic groups and are regarded as part of the cultural heritage of that ethnic group.

Article 44 of the Intangible Cultural Heritage Law provides that, “Where the intellectual property right is involved when using any ICH item, the relating laws and administrative rules shall be applied.” Thus, the Trademark Law shall be applied when a trademark is involved with any ICH item.

Article 8 of the Trademark Law provides that, “In respect of any visual sign capable of distinguishing the goods or service of one natural person, legal entity or any other organization from that of others, including any word, design, letters of an alphabet, numerals, three-dimensional symbol, combinations of colours, voices and their combination, an application may be filed for registration”. It is therefore fair to say that there is no conflict between the protection of ICH and trademark registration. The title of an ICH item is eligible for a trademark registration when the elements of the trademark are fulfilled.

In the case of “eight-method bottle diagnosis”, though, there is overlap between the ICH and the content of public domain, and the recognition and award of ICH title does not naturally put the ICH item in the public domain. To decide whether the “eight-method bottle diagnosis” is in the public domain, one shall analyze whether this technique is eligible for IP protection. More specifically, whether the name of “eight-method bottle diagnosis” can be registered as a trademark depends on whether it has marked features.

Marked features

According to article 9 of the Trademark Law, easily identifiable marked features are the preconditions for trademark registration. Take the “eight-method bottle diagnosis” technique as an example; it is a healthcare treatment with the features of the Hui ethnic group. The “bottle” is a special utensil with Islamic features, and the “eight-method diagnosis” includes head, face, ears, hands, feet, bones, veins and breath diagnosis.

When used on relative services as a trademark, it is very easy for the public to think that the “eight-method bottle diagnosis” is a description of the services rather than a trademark that is capable of distinguishing the origin of the services.

Yang applied for the trademark registration under dispute as early as 2 April 2004, while the “eight-method bottle diagnosis” of the Hui ethnic group was recognized as a national ICH on 7 June 2008. After years of usage, the disputed trademark has accumulated a certain degree of awareness and was awarded “renowned trademark” status in Ningxia Hui Autonomous Region. However, the “eight-method bottle diagnosis of Hui ethnicity group” has 1,300 years of history and is widely used among Hui people, and is now a national ICH item.

In terms of the length of use time, the scope of application or the objective understanding by the public, the awareness amassed by a disputed trademark is not enough to offset or exceed the view of the public that “eight-method bottle diagnosis” is a healthcare treatment with the features of Hui ethnic group. In this light, Beijing High People’s Court ruled that the “eight-method bottle diagnosis” is not eligible for trademark registration on the ground that it lacks marked features.

Suggestions and reflection

In an overview of the reality of the protection of ICH in China, it is not difficult to conclude that although the government has lent intensified support to the passing and dissemination of ICH, there is still a need to apply the IP protection regime, including trademark registration, to bridge the gap between the ICH and modern life, to rejuvenate ICH, and to enable it to be passed down effectively.

First, the trademark registrant should manage to give marked features to the trademark by improving the brand effect and identifiability of the goods.
Second, in the case of the ICH item with marked features, it is suggested that the collective trademark application is applied in the name of a trade society or other groups. In this way, the user’s membership in the organization is manifest, and the quality of the goods and services provided by the member and the usage of the collective trademark can be monitored and controlled by the organization.

Third, a toolkit including trademark, copyright, patent and other IP protection regime is needed to protect the production of ICH items.

Michael Liu is a senior partner at Dentons

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