Which protection for trademark including religious sign?

While strolling through the streets, it is not untypical to see some brands including or making reference to a religious sign without any obvious connection with the religion at issue. However, the registration of the trademark including a religious sign is still a controversial and sensitive topic which needs a necessary balance between the trademark holder’s interest and the functions of the trademark which imply among others to protect consumers against confusion about the source of goods and services. 

Because religious signs generally fall under the category of common patrimony, the marks similar to them or containing their elements are hardly granted for registration in most circumstances.

Under Chinese Trademark Law, any visible sign that can be serve to distinguish the goods, including letters, numerals, figurative elements, three dimensional symbols, color, sound or any combination of the aforesaid may be applied for trademark registration. However, this apparently large choice of possibilities is limited by specific restrictions such as the Article 10 which prohibits signs delivering deceptive meaning or being detrimental to socialist ethics or other unwholesome influences. 

Therefore, the registration of a sign can be rejected if it is perceived as being morally unacceptable, regardless of having a distinctive character. Although the concepts of “morality” and “public order” have quite broad meanings, they commonly refer to the requirements that should be followed by a country or society for living together in a civilized manner. Generally, “morality” or “public order” is related to the matters of national spirit, basic national policy, decency, sex, religious beliefs, traditional culture and lifestyle. 

According to the Chinese Trademark Law, religious signs are generally excluded for trademark registration. Therefore a trademark consisting of the words “Buddha”, “Convent”, “Temple” or any other religious terms is unlikely to be granted for registration pursuant to the Article 10 of the Trademark Law. One of the underlying rationales is that the public would possibly associate the goods and services with the religion concerned and thus it will cause confusion over the origin of the goods or service. 

On the other hand, the law permits religious entities or commercial entities to use a religious sign as trademark at the unique place of worship. Such trademark registration is allowed, as long as it does not conflict with others’ legitimate interests. 

Moreover, a sign also may obtain secondary meaning by the use in trade. As a result, its original religious meaning may no longer convey the sense that it was supposed to represent. For example, Shaolin Temple is China's best-known Buddhist monastery and the birthplace of Kung Fu practice; however, the religious signs “Shaolin” (少林) and “ShaolinTemple” (少林寺) have been used as trademarks by a wide variety of enterprises, covering industries of automobile, furniture, hardware, food, pharmaceuticals, which has led to dilute its original significance.  

Another typical example is the Buddhist term “NIRVANA” which has been largely registered as trademark in various classes and contributes its initial meaning and potentially distinctiveness related to the buddism religion. We can also cite the term "CHRISTIAN" which constitutes a direct reference to the Christian religion but also widely used as personal name.

It is worth to notice that under the international legal framework, the countries adopt different approaches to determine the eligibility of religious signs for trademark protection. 

When religious signs are contrary to morality or public order, they are excluded from trademark protection. Some countries limit the application of this doctrine to the particular circumstance where trademark registration is sought with an intention of offending the religion concerned. In other countries where trademark signs are generally regarded as not being inherently distinctive, the distinctiveness requirement is used to safeguard against trademark registration, and protection, of religious signs. However, this also means that if a religious sign can serve to indicate the origin of the goods, it may be eligible for trademark registration and protection. 

In the United States, the Lanham Act allows religious signs to be protected as trademark on the ground that even though a religious organization does not make profits or sell goods, it still needs to protect its reputation and good will in respect that the subject sign does not “consist of or comprise immoral, receptive, or scandalous matter”. 

Surprisingly tough, the Article 6 of the Paris Convention provides some absolute grounds against trademark registration such as state emblems, official hallmarks, and emblems of intergovernmental organizations, but no reference to the religious signs. In EU countries, some signs of high symbolic values, such as religious signs and historical personages, are likely to be denied for trademark registration. 

Another way to grant protection of religious sign could be through the registration as collective trademark of certification trademark to prevent misuse of religious sign. 

A “collective trademark” refers to a trademark “registered in the name o fa group, association, or any other organization for use in business by its members to indicate membership” whereas a certification mark is defined as “a mark owned by an organization that exercises supervision over a particular product or service and which is used to indicate that third-party goods or services meet certain standards pertaining to place of origin, raw materials, mode of manufacture, quality, or other characteristics”. However, to obtain the protection through these specific trademarks in China, the trademark shall meet the requirements and be granted for registration as collective or certification trademark is its country of origin. 

Due to the common patrimony nature, it is still tough to obtain the registration of a trademark including religious sign unless justifying that the applied sign is linked to the place of worship, acquire high distinctiveness through use or having a second meaning. In this perspective, the law intends to free-riding behaviors with intend of grabbing cultural heritage rather than establishing a distinctive character of a mark.

Marie Ferey

HFG Law&Intellectual Property