The Theories and Practices of Trademark Genericism in China

 

Taiwan Advance Patent and Trademark Office

Zoe Fu

2018/01/31

Wedge

The function of a trademark is to inform consumers about the source of the goods or services with which that mark is associated. Therefore, the trademark must be distinctive of the goods or services. If a mark is the product’s generic name, or it is descriptive of a good’s nature or geographic origin, it cannot serve as a trademark for the goods, unless when a descriptive trademark has acquired a “secondary meaning,” thus has become distinctive in the public’s mind through use as a trademark. Trademark genericism also known as genericide, genericness and generalization, is the rule which governs that loss of trademark protection of a registered trademark that was once distinctive and often well known, but fell into the public domain and became a generic term owing to the change in the perception of the consuming public. Although it is not a new concept in U.S. court or the other European countries, genericism has finally been introduced to Taiwan since the amendment of Taiwan’s Trademark Act went in effect in 2003. In China, the concept was not codified until the amendment of Trademark Law of the People's Republic of China in 2014. This paper services to provide a brief introduction of genericism legal practice in China through a judicial interpretation issued by the supreme people’s court of China in 2017, along with the discussions from Taiwan’s legal perspective. (find the regulations in table 4)

Summary of the case “Simmons LLC. v. The Trademark Appeal Board”

In 2013, an US company Simmons Bedding Company LLC. (hereinafter referred to as “Simmons LLC.”) filed three trademark applications(table1) to the Trademark Office of the State Administration for Industry and Commerce of the People's Republic of China (hereinafter referred to as “SAIC”). All the applications were denied due to the same reason-the subject marks “席夢思(Simmons)” have become a generic name of spring mattress and therefore is devoid of distinctiveness. Simmons LLC. thus filed appeals against the decision to The Trademark Appeal Board of the State Administration for Industry and Commerce of the People's Republic of China (hereinafter referred to as “Appeal Board”), Beijing Intellectual Property Court (hereinafter referred to as “IP court”), and one of the application went to the Higher People's Court of Beijing Municipality (hereinafter referred to as “Beijing Higher People’s court”) and eventually to the supreme people’s court of China (hereinafter referred to as “Supreme court”). The Supreme court had issued the final decision in 2017, of which the subject trademark have become a generic name of spring mattress, therefore cannot service as a trademark. These suits have clarified the definition of genericism in legal practice in China, so the applicants may align the rules and be vigilant of monitoring their trademark strategies no matter in the preparing stage of application or in actual use.

    The Simmons LLC. claimed that “席夢思” is not a generic name of goods and was transliterated from an English family name “Simmons” of which is the last name of the company founder. On the other side, in Application No. 12953093, the Supreme court holds that:

  1. The distinctive part of the subject trademark is “席夢思”. “Simmons” is the transliteration of “席夢思” in this trademark thus is devoid of distinctiveness. According to the Xiandai Hanyu Cidian(Contemporary Chinse dictionary), “席夢思” is the general name of spring mattress. When a name is listed as a name of goods by dictionaries, it can be seen as a generic by convention.
  2. The subject trademark designated in spring mattress cannot distinguish the goods and indicates the source of the goods, thus is not registerable.
  3. Even though the Simmons LLC. had provided the evidence of actual use in China, it is not enough for proving the subject trademark is not a generic name of spring mattress in Chinese people’s common sense.

Also, in Application No.12700789, the judge of the IP court asserted that “only consisting of Names, devices, or designs that are generic to a class or group of goods” does not mean the subject mark is allowable while containing the elements without distinctiveness other than the generic name. In Application No.13451649, the judge of the IP court pointed out that a mark can only be considered without distinctiveness as a generic term to the goods, and should not be extended to the other goods. Therefore, when “席夢思” is designated in class 24, it should be deemed an arbitrary mark, and the Decision of Reexamination Rejection (2016)No.30247 should be revoked.

Subject trademarks and litigation process(table1)

App. No. 12953093

App. No.12700789

App. No.13451649

Designated Class

Designated Class

Designated Class

20

20

24

Litigation Process

Litigation Process

Litigation Process

Decision of Reexamination Rejection (2015)No.35715

Decision of Reexamination Rejection (2014)No.77852

Decision of Reexamination Rejection (2016)No.30247

IP court(2015)No.5307

IP court(2015)No.1825

IP court(2016)No.5281

Beijing Higher People's Court (2016)No.2967

N/A

N/A

Supreme court(2016)No.2967

N/A

N/A

 

Discussion

  1. The importance of the Maintenance Use: A trademark is able to extend its protection scope by becoming a well-known trademark. However, a trademark can also lose its distinctiveness due to its popularity or significance and become the generic name for, or synonymous with, a general class of product or service. Thus, trademark owners need to be vigilant in monitoring the use and public perception of their marks. For example, in the ruling of “DAVID ELLIOTT & CHRIS GILLESPIE v. GOOGLE, INC.”, GOOGLE has successfully protected its trademark from being deemed as a generic term.
  2. Usually, a trademark presented in English or Chinese will be judged differently while determining its distinctiveness. Nevertheless, if the English words of the trademark are merely transliterated from the Chinese words or spelled by Pinyin system, it will be considered the same with the Chinese words. In Simmons’ cases(application 12953093 and 12700789), “Simmons” and “席夢思” appeared in one trademark. First of all, the judges asserted the distinctive part is “席夢思” because the Chinese consumers are likely to be attracted by the Chinese symbols. Secondly, the judges assumed that “席夢思” is the transliteration(not the translation) of “Simmons”, hence it is the generic name of spring mattress as well. From this perspective, the entire trademark is not distinctive to its designated goods so both applications were rejected(table3).
  3. The generic name can only be deemed without distinctiveness in the specific goods. Although it might rise the problem of being likely to misled the public.

conclusion

The stunning defeat of Simmons LLC. is a good example of trademark generisim. From the above information, the applicants, especially the foreign companies or individuals who wants to set up in business overseas, must be vigilant not only in the placement stage before or in the application, but also in the trademark rights maintenance and the manners of actual use to avoid their trademarks from becoming generic names. Additionally, the trademark genericism happens differently in each area. In Simmons’s cases, “席夢思” has only been deemed as a generic term of spring mattress in China. The applications of both “席夢思” and “Simmons” which were filed in Taiwan, have obtained the trademark protection because the terms have not yet been considered a goods’ name here(table2). In brief, if foreign applicants want to create a word trademark in local language to where they want to start their business, they should always be careful that the trademark, either translated or transliterated from its original language, might become a generic term and lose its significance after the local people have widely used it as a name of the goods.

 

Relevant Registered trademarks in Taiwan(table2)

 

Designated class

Trademark and its design

Publication date

Registered No.

Applicant

1

072

SIMMONS

1975/10/01

00077831

Simmons LLC.

2

020

SIMMONS

1998/07/01

00804864

Simmons LLC.

3

020024

SIMMONSBETTERSLEEP

2005/03/16

01145105

Simmons LLC.

4

020

席夢思

2005/11/16

01181460

Simmons LLC.

5

020

SIMMONS

2006/05/16

01209725

Simmons LLC.

6

020024

SIMMONS

2013/01/01

01559470

Simmons LLC.

7

020

SIMMONS

2013/01/16

01560421

Simmons LLC.

 

Relevant trademarks in China(table3)

 

Registered No.

Applied date

Trademark and its design

Applicant

Statue

1

384258

1988/06/21

SIMMONS

Simmons LLC.

Registered

2

11057692

2012/06/12

SIMMONS

Simmons LLC.

Registered

3

585088

1990/08/06

SIMMONS

Simmons LLC.

Registered

4

1350355

1998/08/03

SIMMONS

Simmons LLC.

Registered

5

16108497

2015/01/08

SIMMONS STUDIO

Simmons LLC.

Registered

6

12700789

2013/06/04

席夢思 SIMMONS

Simmons LLC.

Registered(not in class 20)

7

12607958

2013/05/20

SIMMONS SINCE 1870

劉培帥

Rejected

8

4678507

2005/05/25

SIMMONS-BETTER-SLEEPTHROUGHSCIENCE

Simmons LLC.

Registered

9

4908039

2005/09/21

SIMMONS WORLD CLASS

Simmons LLC.

Waiting for exam

10

11057689

2012/06/12

SIMMONS S

Simmons LLC.

Registered

11

12700790

2013/06/04

席夢思 SIMMONS

Simmons LLC.

Registered

12

12953093

2013/07/22

SIMMONS 席夢思

Simmons LLC.

Registered(not in class 20)

13

4678489

2005/05/25

席夢思;SIMMONS

Simmons LLC.

Waiting for exam

14

4678491

2005/05/25

席夢思;SIMMONS

Simmons LLC.

Waiting for exam

15

15674411

2014/11/13

SIMMONS STUDIO

Simmons LLC.

Registered

16

15303068

2014/09/05

SIMMONS BEAUTYREST

劉培帥

Rejected

17

17722189

2015/08/21

SIMMONS ELITE

Simmons LLC.

Registered

18

17722192

2015/08/21

SIMMONS PREMIER

Simmons LLC.

Registered

19

4678493

2009/02/07

SIMMONS

Simmons LLC.

Registered

 

Comparison of regulations between China and Taiwan(table4)

No.

Regulations

1

Article 11 of theTrademark Law of the People's Republic of China

Article 29 of theTrademark Act of the Republic of China(Taiwan)

Article 11. The following marks are not permitted to be registered as a trademark:

1) only consisting of Names, devices, or designs that are generic to a class or group of goods;

2) Marks that merely indicate the quality, principal raw materials, function, use, weight, quantity or other features of the goods in respect of which the marks are used;

3) Other marks that lack distinctive characteristics.

A mark to which the above provisions are applicable but which has acquired distinctiveness through use and is readily distinguishable may be registrable as a trademark.

Grounds for refusal of registration: devoid of distinctiveness; disclaimer

A trademark shall not be registered if it is devoid of distinctiveness in any of the following:

(1) consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services;

(2) consisting exclusively of the generic mark or term for the designated goods or services; or

(3) consisting exclusively of other signs which are devoid of any distinctiveness.

Subparagraph 1 or 3 of the preceding paragraph shall not apply if the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant.

Paragraph2, Article 49 of theTrademark Law of the People's Republic of China

Subparagraph4, Paragraph1, Article 63 of theTrademark Act of the Republic of China(Taiwan)

Where a registered trademark is becoming a generic name in a category of approved goods, and the mark has not been used for a period greater than three years without any justifiable reasons, any organization or individual may request that the Trademark Office make a decision to cancel such registered trademark.

Grounds for revocation; revocation of some goods or services

The Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark if such trademark is in any of the following:

(4) where the trademark has become the generic mark or term, or common shape for the designated goods or services;

2

Article10 of theRegulations on Several Issues Concerning the Trial of Administrative Cases

Involving the Granting and Confirmation of Trademark Rights

Article 2.2.2 of theTrademark Distinctiveness Examination Guidelines

I (1) If a disputed trademark is a name of goods, as specified by law or by convention, a People's Court should rule that the trademark is a generic name as referred to in Article 11(1)(1) of the Trademark Law.

(2) Names listed as generic goods names in laws and regulations, or in National Standards or Industry Standards, should be ruled to be generic names.

(3) Where the relevant public generally believes that a certain name is representative of a class of goods, that name should be ruled to be a generic name by convention.

(4) Where a name is listed as a name of goods by professional reference books, dictionaries, etc., this can be considered when ruling that the name is generic by convention.

II The general knowledge of the relevant public nationwide is the usual standard for judging whether a name is generic by convention. Where, for reasons such historical tradition, customs and practices, or the geographical environment, etc., goods have been formed that are specific to a relevant market, then a People's Court may rule that the title normally used for the goods in the relevant market are their generic name.

III Where the applicant of a disputed trademark clearly knows, or should have known, that the trademark it has applied to register is a goods’ name by convention in certain regions, a People's Court may view the trademark it has applied to register as a generic name.

IV When a People's Court rules on whether a disputed trademark is a generic name, the factual state of affairs as at the date of application will normally prevail. If there has been a change to the factual state of affairs at the time of approval for registration, then the court will judge whether the trademark is a generic name based on the factual state of affairs at the time of approval for registration.

Generic name is the name which the merchants commonly used as a general representation of goods or services, including acronyms, initials, and common names.

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