POWERPOINT Trademark Refusal Reversed: Distinctiveness and Generic Names

Second-instance case number: (2016) Jing Xing Zhong No. 2609. Plaintiff: Microsoft Corporation. Defendant: the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (TRAB).

Case Background

Microsoft sought territorial extension to China of its international POWERPOINT registration for computer services and cloud computing services in Class 42. The Trademark Office refused protection on the ground that the mark lacked distinctiveness for those services.

TRAB and the Beijing Intellectual Property Court considered POWERPOINT a file format developed by Microsoft. They held that consumers generally perceived the term as the name of a format rather than as an indication of the source of goods or services, and therefore found it unregistrable.

The Beijing High People’s Court noted that Microsoft had applied for POWERPOINT for computer software in Class 9 in 1999, obtained registration in 2000 and maintained that registration. POWERPOINT was therefore not a generic name for presentation software in 2000. Its subsequent recognition by the relevant public had strengthened, rather than weakened, the connection between the product and Microsoft.

There was no evidence that competitors used POWERPOINT as a product name or software format. Competing products carried different trademarks, such as KEYNOTE, SLIDE and WPS. TRAB had therefore not established that POWERPOINT had become generic.

POWERPOINT is an original coined English expression. In the absence of sufficient evidence of genericness, it could identify commercial origin and was registrable. The High Court set aside the first-instance judgment and directed TRAB to make a new decision.

Commentary

Genericness is assessed by the general understanding of the relevant public nationwide. A term does not necessarily become generic merely because it is widely used or recognized.

Although POWERPOINT was widely used in connection with presentation software, that use reinforced its association with Microsoft, and competitors were not shown to use it as a product or format name. Its reputation therefore did not make it generic or deprive it of distinctiveness for software.

Selected as one of the Beijing High People’s Court’s ten innovative cases of 2016, the judgment develops the treatment of generic product names, supports the protection of businesses’ rights and discourages overly broad findings of genericness.