Can “Green Prickleyash” (青花椒) be registered as a trademark on catering service in China?

If you do not know green prickleyash, I would say it is like garlic in India food, or butter in a bread.  It is one of the main seasonings in Sichuan cuisine. 

Green Prickleyash

Recently a company based in Shanghai city initiated a series of litigations against restaurant owners using the word “Green Prickleyash”.  The actions have aroused intense discussion in China because Green Prickleyash may not be recognized as a trademark to the public to the first impression, namely when Green Prickleyash is listed on the signboard, most people would recognize Green Prickleyash as an element of the food, but not a brand.

But CTMO did grant the trademark, so there is no problem for the trademark owner to sue.  The local court in Chengdu city judged infringement against a tiny restaurant owner in the first instance, and a 30,000 RMB compensation has been granted to the trademark owner – the reason is clear, the trademark valid, the word Green Prickleyash is on the board of the restaurant. 

The restaurant owner appealed.  During the period of second instance, the public discussion of this case is so fierce that the local government has to make an announcement that it also feels the restaurant owner may not be infringing because he is not intended to use Green Prickleyash as a trademark, namely it is not a “trademark use”.  One the other hand, some experts still guard the idea that granting of the trademark is not in breach of the trademark law.

The intermediate court of Chengdu does not have to judge whether the trademark is valid -  Chinese court does not have the authority to judge whether a trademark is valid.  But in its final judgment, it versed the judgment to be not infringing.  There are two main reasons:  a. Green Prickleyash is not obvious enough to be recognized by the public as a trademark; b. the restaurant owner does not intend to use Green Prickleyash as a trademark.

One real case I saw is Eucalyptus be registered as a honey brand, but actually it is a place honey is made.  CTMO seems to be quite loose on such trademark, but the real reason would be, I assume, the reviewers may not know the meaning of all these words.

So if you are facing this kind of problem, try to invalidate the trademark for lack of distinctiveness, as the restaurant owners do against Green Prickleyash.  I’ve represented a client against the trademark “Half” in pipeline industry – half is a common technic of combination in the pipeline, but the reviewer may not be aware of the this fact – we were successful in this case.

Contact Mr. Ma Jun for Chinese trademark consulting and search :

majun@100ybf.com