By Joy Dong
Case: Starbucks Company v. CNIPA – Supreme People’s Court Administrative Rehearing Decision (2024) Zuigao Faxing Shen No. 1185
1. Background
In 2021, Starbucks filed a trademark application for the mark “随星杯” (Sui Xing Bei, literally “Cup with the Star”) under Class 30, covering various coffee products. The CNIPA rejected the application on the ground that the mark was deceptive and liable to mislead the public regarding the nature or quality of the goods, thus violating Article 10(1)(7) of the Trademark Law.
Both the Trademark Review and Adjudication Department and the courts of first and second instance upheld the refusal, finding that the mark could cause consumers to believe it described a cup rather than coffee products themselves. Starbucks requested a retrial before the Supreme People’s Court (SPC), arguing that “随星杯” was a coined expression with no inherent meaning and that consumers in China already associated it with Starbucks’ promotional campaigns.
2. Supreme People’s Court Decision
The SPC dismissed the retrial petition and maintained the rejection. The Court agreed that “随星杯” would likely be perceived by the relevant public as referring to a cup used to hold coffee, rather than to coffee as a product. This, in the Court’s view, could mislead consumers about the characteristics of the goods, precisely the type of confusion Article 10(1)(7) seeks to prevent.
The Court emphasized that the “non-relevance” exception in Article 10(1)(7) should be applied strictly: only when the meaning of a word or image has no industrial relevance to the designated goods may the sign escape the prohibition.
3. The “No Industry Relevance” Test
Under the Trademark Examination and Adjudication Guidelines, Article 10(1)(7) excludes from refusal those marks whose descriptive elements refer to a completely unrelated industry. The Guidelines give classic examples: “Blueberry” for dishwashers, or “Apple” for computers.
In both cases, there is no industry connection between the sign’s literal meaning and the designated goods, and thus the marks are registrable.
However, when a mark bears even a weak connection to the product category (such as when the term “cup” relates to beverages) examiners tend to conclude that the sign might mislead consumers, even if the potential for confusion is minimal.
4. Why the Starbucks Case Matters
The decision reveals how narrowly and rigidly Chinese authorities are currently interpreting “no industry relevance.” The SPC confirmed that as long as the meaning of a mark points to an object functionally or conceptually associated with the designated goods, it may fall under Article 10(1)(7).
From a practical perspective, this means that even imaginative or playful branding choices can be refused if they draw metaphorical or indirect links to the product field. For instance, while “Cup” and “Coffee” belong to distinct product classes, their everyday association proved enough for the authorities to consider the mark misleading.
5. Comparative Perspective
In many international trademark systems, such as those of the EU and the United States, the threshold for deceptiveness is significantly higher. Marks are rarely rejected merely because they evoke a related object; they must actually deceive consumers as to the nature or quality of the goods.
In the EU, Article 7(1)(g) EUTMR bars registration of marks “of such a nature as to deceive the public.” However, the deception must be objectively provable: a consumer must be led to believe the product has a false attribute (for instance, “organic” when it is not). Likewise, U.S. law (15 U.S.C. §1052(a)) requires that the mark actually misdescribes and that consumers are likely to believe the misdescription.
By contrast, the Chinese approach under Article 10(1)(7) reflects a preventive logic: the mere potential for misinterpretation, even if unlikely, can suffice for refusal.
6. Balancing Consumer Protection and Trademark Creativity
The Starbucks “随星杯” case exposes the tension between consumer protection and brand innovation in Chinese trademark law. While the rule aims to prevent deceptive marks, its current application risks penalizing creative or evocative naming strategies, especially when linguistic or cultural nuances are involved.
The “no industry relevance” test, though useful in theory, becomes problematic when applied rigidly, as in industries where related products naturally overlap (coffee and cups, wine and glasses, perfume and bottles).
7. Outlook and Practical Takeaways
For brand owners:
- Assess linguistic associations carefully: even indirect product references may raise concerns under Article 10(1)(7).
- Provide consumer perception evidence: demonstrating that the mark is seen as a brand identifier, not a product descriptor, can be persuasive in review stages.
- Consider alternative filings, such as logo-based marks or Chinese transliterations with less descriptive resonance.
For policymakers and practitioners, this case underscores the need to clarify the boundaries of “industry relevance” and to balance the objectives of preventing deception and encouraging innovation in branding.
For international companies: in China, linguistic imagination must be handled with caution, especially when your creativity comes in a cup.
8. Conclusion
The Starbucks “随星杯” decision reinforces China’s increasingly strict stance on absolute grounds for refusal under Article 10(1)(7). By prioritizing a literal and risk-averse interpretation of “industry relevance,” Chinese trademark authorities have drawn a line that leaves little room for creative expressions connected even tangentially to their product field.
Photo by Leo Gilgamesh on Unsplash