Binghui WANG 
Chinese Attorney-at-Law
Beijing Wei Chixue Law Firm

 
Article 49 of Chinese Trademark Law stipulates that where a registered trademark has become the generic name of the goods for which its use is approved, any entity or individual may apply to the Trademark Office for cancellation of the registered trademark. In such cancellation cases, in accordance with the Trademark Examination Guidelines, the applicable requirements for "becoming a generic name" are as follows.

(1) The registered trademark has not yet become the generic name of the goods for which it is approved for use at the time of its approval of the registration.

(2) The registered trademark has lost its function of identifying the source of goods during actual use in the market and has become the generic name of the goods for which it is approved for use when the cancellation request is filed.

It can be seen from the above that there are mainly two aspects of determining “becoming a generic name”. The first is timing, i.e., in such cancellation cases, it is required to prove the trademark involved has become a generic name when the cancellation request is filed. The second is the loss of the source identification function as a trademark, which requires proving the trademark involved can no longer perform its function of identifying the source of the goods. In practice, the main dispute lies in how to determine whether the trademark involved has lost its function of identifying the source of goods, that is, the function of a trademark is to distinguish between different goods or to distinguish the source of the goods.

● Provisions in judicial interpretation

Article 10 of Regulations on Several Issues on Administrative Cases over Trademark Registration and Affirmation by the Supreme People’s Court stipulates that where it is a generic name of certain goods in accordance with provisions of laws, national standards, or industry standards, it shall be found to be a generic name. Where the relevant public generally believes that a certain name can refer to a category of goods, it shall be found to be a generic name by convention. Chapter 4 of the second part of the Guidelines also indicates two ways to determine whether the trademark is a generic name for the goods or services. One is to follow laws and regulations, national standards or industry standards; the other is to see whether it has been commonly known or widely used as a generic name for the goods or serviced in the cognition of the relevant public.

Therefore, when determining whether a trademark has become a generic name of certain goods, whether it is at the administrative stage or at litigation stage, the criteria shall include two aspects: first, whether it is a statutory generic name of the goods, which is obviously normative and authoritative, and may be inconsistent with the general cognition of the public in practice. Second, whether it is a conventional generic name, which originates from the cognition of the relevant public, and is established and formed after long-term social practice and thus is extensively accepted by the public.

● The determination of whether a trademark sign becomes a generic name is objective

No matter it is a statutory or conventional, it is a reflection of objective reality. These generic names are used in common in an industry or within a specific scope, and they are used to distinguish one category of goods from another category of goods.

In practice, the determination of whether a trademark has become a generic name follows the principle of objectivity. It is not based on whether the trademark owner has subjective fault in the use of the trademark or the competitive use by competitors in the same industry, etc. For example, in the administrative litigation of a trademark cancellation review case over the trademark No. 14402363 “千页”, the Beijing High People's Court pointed out that the degeneration of a registered trademark into a generic name of certain goods is fundamentally the determination of a legal fact. The fundamental reason why the Trademark Law stipulates that a registered trademark should be cancelled after it becomes a generic name of certain goods for which it is approved for use is that, in such circumstances, it can no longer perform the function of identifying the source of the goods as a trademark, the basic needs of consumers for brand recognition and shopping cannot be guaranteed; and the legitimate rights of other operators to use public signs freely may be hindered, rather than a punishment for the failure of the trademark owner to effectively maintain the registered trademark. Therefore, it is more concerned with whether the consequences of genericization have been formed, rather than the reasons and the efforts of the trademark owner in preventing genericization. The behavior of the trademark owner will affect the process and results of genericization, but once the genericization is formed and the relevant public believes that the registered trademark refers to a category of goods, and then the registration of the trademark involved should be cancelled.

● Specific criteria for determining whether a trademark has become a generic name of certain goods in practice

(1) Whether it is included in national standards or industry standards

The statutory generic name of certain goods refers to the generic name of the goods determined by laws and regulations, national standards, or industry standards. Among them, national standards are issued by the National Standardization Administration, including the mandatory national standards and recommended national standards. Industry standards are a unified standard applied in a certain industry in the absence of national standards. Industry standards should be filed at the National Standardization Administration.

Given the objectivity of a statutory generic name, in practice, the examination of whether there is relevant evidence is often given priority, while media reports, sales information, and other materials are only used as a reference and cannot be used as decisive evidence when determining whether a statutory generic name is constituted.

For example, in the cancellation review of the trademark No. 1126012 “天丝” (Chinese translation for “Tencel”), the applicant submitted various materials involving天丝, including newspapers, periodicals, papers, etc., and in the cancellation review of the trademark No. 16717963 “数字人” (Chinese translation for “digital human”), the applicant submitted the interpretations from Baidu Encyclopedia, 360 Encyclopedia, Sogou Encyclopedia, word dictionary, and "2020 Virtual Digital Human Development White Paper", etc. None of these documents belong to laws and regulations, national standards, or industry standards, but simply online search results or individual opinions. Therefore, the Trademark Office determined that they could not prove that the trademark involved in the case has become a generic name of the relevant goods by the relevant laws, national standards, or industry standards in China.

(2) Whether the trademark sign is widely recognized as a generic name by the public regardless of what region it is.

The determination of a trademark sign that has become a conventional generic name is based on the common understanding of the relevant public nationwide, which requires a high degree of acceptance that the sign has become generic by the relevant public. For example, in the above-mentioned administrative litigation case of the cancellation review of the trademark No. 14402363 “千页” (Chinese for “thousand-layer”), the petitioner Qingmei Company submitted a survey of consumer awareness as evidence. The survey was launched in five cities in different locations, namely Shanghai, Beijing, Suzhou, Jiaxing, and Xi’an, and conducted in the form of street questionnaires under the witness of the notary public. According to the results obtained from collecting statistics  of a certain number of samples, about 87% of the respondents believed that “千页豆腐” (Chinese for “thousand-layer tofu”) is not a trademark or bean-product brand, 61% of the respondents believed that “千页豆腐” (Chinese for “thousand-layer tofu”) is a dish that served by many restaurants. In order to prove that the name has been widely recognized as a generic name, the petitioner conducted the surveys on people randomly selected in different regions across the country. At the same time, the petitioner also investigated the use by operators in the same industry to prove that the word “千页” (Chinese for “thousand-layer”) was not used as a trademark to indicate the entity, but was used as product name for certain specific goods.

(3) Focuses on the distinctiveness of the trademark as a whole and the specific goods

The determination that a trademark sign has become a generic name of certain goods is not arbitrary. The Guidelines stipulate that if a trademark sign is not composed of the generic name of certain goods alone, but is combined with other elements of distinctive features, it should not be directly determined as lack of distinctiveness. When determining whether a trademark sign is a generic name of certain goods, the trademark should be examined as a whole, and the specific goods that the generic name refers to should be defined so as not to affect the similar goods.

In other words, where a claim of a trademark becomes a generic name that only targets on part of the words or device in a trademark, whether the trademark as a whole is distinctive should be taken into account in the examination, and the examination should not be based only on the elements as claimed. In addition, the examination should be limited to the specific goods that the generic name refers to, and should not extend to other designated goods or other goods which are considered similar to the goods that the goods the generic name refers to. For example, in the above mentioned case the trademark “千叶” (Chinese for “thousand-layer”) was only cancelled on “tofu; tofu products”, and the registration of the trademark on other goods was maintained.

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References:
Remade Decision No. 0000003602 of CNIPA Adjudication No. [2020] 0000291437
Cancellation Review Decision of CNIPA Adjudication No. [2024] 0000008655
Cancellation Review Decision of CNIPA Adjudication No. [2023] 0000082044