According to the relevant provisions of the Trademark Law of China, if a trademark only contains the generic name of the designated goods or services, it shall not be registered as a trademark, and will be rejected by the Trademark Office if it is in the process of trademark application. After registration, if the trademark is degraded into the generic name of the approved goods or services during the actual use, others can apply for revocation of the trademark. In order to obtain trademark registration, or to protect the trademark after registration, it is necessary for trademark applicants to have some understanding of this type of trademark. 1.What is a generic name?
“Generic name" of goods or services refers to the names specified by national standards, industry standards, or names accepted through common practice, including the full name, shorthand, abbreviation, common name, registered new varieties of plants. For example: "computer" is the generic name of "computer" products.
The generic name of goods or services is widely used in the corresponding industry or the public, thus it does not have the function of distinguishing the source of goods or services, and lacks the distinctive characteristics of a trademark. In addition, a generic name has public attributes, it could be used by all producers or operators, rather than being used exclusively by a certain entity. If such signs are allowed to be registered as trademarks, it is easy to cause disputes and disturb the market order of fair competition, so generic names should be prohibited from registration. 2.Relevant Provisions of Trademark Law Article 11 of the Trademark Law stipulates that a sign composed only of the generic name of the goods shall not be registered as a trademark (“the goods here include both goods and services). According to this provision, if the trademark applied for registration contains only the generic name of the designated goods, the Trademark Office shall reject the application. If the Trademark Office does not reject the application, others can file an opposition to the Trademark Office after the publication of the application or file an invalidation after the registration of the trademark.
It should be noted that this article emphasizes that a sign composed only of the generic name of the goods shall not be registered as a trademark. If the sign is not only the generic name of the goods, but is combined with other elements with distinctive features, the sign shall not be directly recognized as lacking distinctiveness. If the design of the sign is not "only the generic name of the goods", but is combined with the generic name and other prominent elements, it cannot be directly recognized as lacking distinctiveness, but has to be judged comprehensively according to whether the whole has distinctive features.
Article 49 of the Trademark Law stipulates that if a registered trademark has become the generic name of the designated goods, any entity or individual may apply to the Trademark Office to revoke the registered trademark. This refers to a situation that the registered trademark, at the time of its approval for registration, was not a generic name of the goods and had distinctive features, but in the subsequent actual use in the market, it gradually lost the function of identifying the source of the goods, and became a generic name of the designated goods. If such a registered trademark continues to be used in the market, it is also easy to cause chaos in the market order, so it is necessary to set up a revocation procedure to clean up. 3.Judgment Method on Generic names (1) Judgment Criteria There are two criteria for determining whether a sign is the generic name of the designated goods, one is to see whether it is recognized as a generic name of goods by legal provisions, national standards or industry standards, the second is whether it is commonly accepted or used as a generic name of goods by the public concerned. Professional tool books, According to the relevant provisions of the Trademark Law of China, if a trademark only contains the generic name of the designated goods or services, it shall not be registered as a trademark.
dictionaries, etc., listing the sign as a generic name of goods can be used as a reference for the second criteria.
(2) Judgment on scope of use Generic names for goods stipulated by legal provisions, national standards and industry standards are certainly used throughout the country. As for the commonly accepted or used generic names, generally they are also recognized by the relevant public nationwide. However, for goods or services that have formed a relatively fixed market due to the historical tradition, local customs, geographic environment and other reasons, the commonly used names in the relevant market can also be recognized as generic names.
(3) Judgment on scope of goods The generic name points to the specific goods designated in the trademark application or approved in the trademark registration, if the name is not the generic name of the designated or approved goods, it does not belong to the "generic name". For example, "apple" is the generic name of a fruit, so it cannot be used as a trademark for the designated goods "apple (fruit)", but it can be used as a trademark for the designated goods "cell phone".
(4) Judgment Timing According to Article 11 of the Trademark Law, normally the factual status at the time of filing the trademark registration application shall be used as the basis for determining whether the trademark is a generic name. If the trademark is not a generic name at the time of filing the application, but has become a generic name at the time of approval of registration, it shall still be recognized as a generic name of the goods.
According to Article 49 of the Trademark Law, whether a registered trademark has become the generic name of the designated goods shall generally be based on the factual status at the time of filing the application for revocation, and the factual status at the time of the examination and hearing of the case may be used as a reference. 4. Suggestions (1) Trademarks should try to avoid using words that are descriptive of the goods or services. Trademarks containing descriptive elements are less distinctive and are easily generalized in the course of use. If the trademark must contain descriptive words or even a generic name, it should be applied together with other distinctive elements. For example, "GREE Air Conditioner", "GREE" is the distinctive part, while air conditioner is the generic name of goods, the combination of the two as a whole has distinctive features and can be registered. Of course, after registration, the registrant cannot prevent others from reasonably using the generic name "air conditioner".
(2) Once the trademark is registered, the registrant should standardize the use of trademark and avoid directly using the trademark instead of the generic name of goods for publicity and promotion, in order to prevent consumers from confusing the two and causing the trademark to degenerate into a generic name. For example, the trademark THERMOS initially had distinctive features, but it ultimately degenerated into a generic name because its owner simply used “THERMOS BOTTLE” in advertising, but not using other proper product names, such as vacuum insulated bottles, etc.
(3) The applicant and the registrant should have a strategic awareness of the trademark, aware of the importance of the trademark, and proactively take measures to protect the trademark rights and prevent the trademark from being generalized. For example, when encountering the others applying for similar marks, the owner shall oppose them in time. When encountering trademark infringement, the owner shall take protection actions in time. When encountering a gradual fading of trademarks, the owner shall guide consumers to correctly identify the trademark, etc., in order to protect recognition function and distinctiveness of the trademark.
