Case Review

Others filed a revocation application against the customer's registered trademark No. 26784361 "Duiding" on Class 6 "Metal Rings; Copper Rings; Ordinary Metal Keyrings; Springs (Metal Products)" goods, claiming that the registered trademark has become a generic name for the goods. Our company represented the client in the defense, and the State Intellectual Property Office supported the client's request to maintain the registration of the trademark after review.

The State Intellectual Property Office believes that after the approval and registration of the "Duiding" trademark No. 26784361, the respondent has been continuously using the trademark through Tianjin Yuanxiang International Trade Co., Ltd. and its affiliated company Tianjin Smiley Technology Co., Ltd. on goods such as "springs (metal products)" in Class 6 of its approved use. The evidence submitted by the applicant is also insufficient to prove that the trademark has evolved into a generic name on goods such as "springs (metal products)", which is inconsistent with the situation of "becoming a generic name for goods approved for use" as stipulated in Article 49 of the Trademark Law. Therefore, the reason for revocation cannot be established. According to Article 49 of the Trademark Law and Article 65 of the Implementing Regulations of the Trademark Law, it is decided to reject the revocation application. The registered trademark No. 26784361 shall not be revoked.

Our main argument in the defense is

The term 'registered trademark becomes the generic name of the approved goods' refers to a registered trademark that originally had significant characteristics of the trademark, but in the actual process of market use, it degenerates into the generic name of the approved goods. In this case, our side mainly focused on the argument that "the customer has been authorizing domestic affiliated companies to use and actively protecting their rights in the market since the trademark was registered, and their registered trademark has not degenerated into a generic name for goods" and submitted a large amount of evidence of use and rebuttal. The client's defense reasons include:

1. The current legal regulations, national standards, industry standards, professional reference books, and dictionaries do not specify or record "duiding" as a common name for products such as "springs (metal products)".

2. The customer has at least 3 "opposite top" trademarks registered on Class 6 "Spring (Metal Products)" products since 2018. Especially after the applicant submitted the revocation application, the State Intellectual Property Office still approved the registration of one "Duiding" trademark of the client on Class 6 "Spring (Metal Products)" goods.

3. The client has authorized domestic affiliated companies to use the trademark for commercial purposes before and after registration.

4. The customer has taken legal action against other market entities for registering and using the "Duiding" trademark on products such as springs without any misleading information to the market or relevant public, which may lead them to mistake "Duiding" for the generic name of the product.

5. The evidence submitted by the applicant is insufficient to prove that the customer's trademark has degenerated into a generic name for goods such as "springs (metal products)" when the applicant submitted the revocation application date.

Case experience

According to the relevant laws and regulations and trial practices regarding the revocation of registered trademarks into generic names, the author believes that a registered trademark becoming a generic name for its approved use of goods refers to a registered trademark that originally had significant characteristics of the trademark, but has degenerated into a generic name for its approved use of goods in the actual market use process. For a type of case involving the revocation of a product's generic name, the general points of trial are as follows:

Firstly, the time for identifying the common name

In cases of revocation of a common name, the determination of whether the disputed trademark belongs to a common name is generally based on the factual status of the parties when submitting the revocation application to the trademark revocation examination department, and the factual status during the review can be used as a reference.

Secondly, the characteristics of goods recognized by common names

In the case of revoking a generic name, the determination of whether the disputed trademark belongs to the generic name of goods should be based on the specific goods pointed to by the generic name, and similar goods should not be considered. That is, the registered trademark should be analyzed and compared one by one to determine the characteristics of the goods or services.

Thirdly, the regions for the recognition of common names

The general standard for determining the "legal common name" should be "nationwide", and the evidence materials must be broad and standardized, representing the general understanding of the industry. If it is claimed that the registered trademark has degenerated into a "commonly used name agreed upon", factors such as historical traditions, local customs, geographical environment, etc. that have formed relevant market awareness can be considered in the determination of the "commonly used name agreed upon". However, the universal recognition characteristics reflected in the evidence materials within the region and market scope should also be taken into account.

Significance of the case

This case has important reference significance for us to handle cases such as revoking registered trademarks and becoming generic names in the future. The specific manifestations are:

Firstly, it is important to distinguish between different situations where a trademark is originally a generic name or a registered trademark degenerates into a generic name for goods. If a trademark is originally a generic name and lacks distinctiveness, it falls within the scope of adjustment of Article 11 (1) (1) of the Trademark Law, which states "only the generic name, graphics, and model of the goods". If a registered trademark degenerates into a generic name for goods due to subjective or objective reasons during market use, it falls within the scope of adjustment under Article 49 (2) of the Trademark Law.

Secondly, remind customers to understand the relevant professional knowledge of generic names and register trademarks that may constitute generic names with caution.

Thirdly, remind customers to use and promote registered trademarks in a standardized manner, and pay attention to retaining evidence. At the same time, always pay attention to the market development of its trademark and avoid nominalization and verbalization of registered trademarks both internally and externally. If it is found that other market entities have improperly used registered trademarks, resulting in a trend of trademark generalization, measures should be taken actively to correct it. For example, if a registered trademark is listed as a generic name by search engines, dictionaries, or reference books, a letter can be sent to the relevant operator to raise objections and provide proof of trademark registration, requesting them to revise the relevant records.

Fourthly, remind customers to monitor their trademarks and promptly protect their rights in case of generic registration and use of their registered trademarks.