The generic name defence in trademark infringement cases

By Tracy Shen and Nancy Qu, Chang Tsi & Partners
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In a trademark infringement lawsuit, the alleged infringer may avail the defence that the trademark involved in the case is a generic name in order to claim that no trademark infringement has been committed. In this article, the trademark infringement case between Guinness World Records (GWR) and Chery Automobile is cited as an example for exploring the factors to be considered in determining whether a trademark is a generic name in a trademark infringement case.

申会娟 TRACY SHEN 铸成律师事务所 合伙人 Partner Chang Tsi & Partners
申会娟
TRACY SHEN
铸成律师事务所
合伙人
Partner
Chang Tsi & Partners

GWR, the plaintiff to this case, holds multiple registered trademarks of “Guinness”, “吉尼斯世界纪录” (Guinness World Records), and “GUINNESS WORLD RECORDS” on goods and services of category 35 and category 41. Since 10 April 2014, Chery, the defendant to this case, has extensively used the above-mentioned Guinness series of trademarks in its promotional activities and campaigns of the Chery Arrizo Guinness China Challenge Tour.

In June 2015, GWR filed a lawsuit against Chery for trademark infringement and unfair competition. In August 2017, the Foshan Intermediate People’s Court, in its first-instance judgment, found that Chery has infringed upon the trademarks of GWR. This case is currently undergoing second-instance proceedings.

GENERIC NAME DEFENCE

Chery defended itself in first-instance proceedings by claiming that no trademark infringement has been constituted because the Guinness series of trademarks are generic names. The defendant mostly submitted some media reports as evidence in an attempt to prove that the Guinness series of trademarks, after being in use for a long time, has been identified by the relevant public as entailing the meaning of “being superlative in the world” or “world records”, and therefore the trademarks have become generic names.

屈小春 NANCY QU 铸成律师事务所 律师及专利代理人 Patent Attorney Chang Tsi & Partners
屈小春
NANCY QU
铸成律师事务所
律师及专利代理人
Patent Attorney
Chang Tsi & Partners

The defendant further argued that as the Guinness series of trademarks were generic names, they were not distinctive and thus were not capable of distinguishing the sources of services, and as a result the defendant had not infringed upon GWR’s right to exclusive use of trademarks.

Pursuant to article 11 of the Trademark Law of China, a mark that only contains the generic name of a product may not be registered as a trademark of the product. At the same time, any entity or individual may, in accordance with article 49 of the Trademark Law, apply to the Trademark Office to cancel a registered trademark that has become the generic name of a product for which the trademark is approved to be used.

The Opinions of the Supreme People’s Court (SPC) on Several Issues concerning the Adjudication of Administrative Cases on Granting and Affirming Trademark-related Rights, promulgated by the SPC in 2010, have clearly explained the methods to determine a generic name.

Generic names include those prescribed by law and those by conventional usage. In determining whether a disputed trademark is a generic name, the first step is to examine whether the trademark falls within the scope of statutory generic names of products. In the GWR v Chery case, neither “吉尼斯”(Guinness in Chinese) nor “GUINNESS” has been listed as a generic name by any laws, national standards, industry standards and other normative documents. Therefore, it is clear that the Guinness series of trademarks are not statutory generic names of products.

Pursuant to article 7 of the opinions of the SPC, where the relevant public generally believes that a certain name may be used to refer to one type of product, the name must be deemed as a generic name by conventional usage. The fact that a name has been listed as a product name by professional reference books, dictionaries, etc., may be adopted as a reference in deeming the name as a generic name by conventional usage. Generic names by conventional usage must generally be judged based on the general cognizance of the relevant public across the country.

In other words, a court will mainly consider the following three factors in determining a generic name by conventional usage: (1) the general cognizance of the relevant public; (2) the geographical scope of usage of the generic name; and (3) the inclusion of the generic name in professional reference books and dictionaries.

In the GWR v Chery case, the evidence submitted by the defendant for its generic name defence was mainly third-party media coverage, which was mostly a collection of the incidents where the Guinness series of trademarks were improperly used in some public activities of extreme challenges. The defendant tried to rely on these media reports to prove that “吉尼斯” (Guinness in Chinese) and “GUINNESS” had the specific meaning of “being superlative in the world” or “world records” and that they should therefore be recognized as generic names.

The court of first instance, in its judgment, discussed the focus of the dispute, i.e., whether the Guinness series of trademarks constitute generic names, from the following perspectives: (1) whether “吉尼斯” (Guinness in Chinese) and “GUINNESS” have inherent meanings such as “being superlative in the world” or “world records”; (2) whether “吉尼斯” (Guinness in Chinese) and “GUINNESS” have been given meanings such as “being superlative in the world” or “world records” in the course of their usage; (3) the cognizance of the relevant public; and (4) actual situations of the authentication of relevant world records.

After taking into account the evidence submitted by the plaintiff and the defendant, the court of first instance held that the evidence was not sufficient to prove that “吉尼斯” (Guinness in Chinese) and “GUINNESS” have been given the meaning of “being superlative in the world” or “world records” in the course of their usage.

CASE ANALYSIS

The recognition of a generic name may take place in the process of granting and affirming trademark-related rights, and in the proceedings of trademark infringement lawsuits. In the latter case, judges are often more cautious in determining whether the trademarks involved constitute generic names.

A registered trademark with a relatively high degree of public awareness should not be easily recognized as a generic name unless there are facts to prove that the trademark has become a statutory generic name or a generic name by conventional usage and has completely lost its function of distinguishing the source of goods or services.

Tracy Shen is a partner at Chang Tsi & Partners. She can be contacted on +86 10 8836 9999 or by email at tracyshen@changtsi.com

Nancy Qu is an attorney-at-law and patent attorney at Chang Tsi & Partners. She can be contacted on +86 10 8836 9999 or by email at nancyqu@changtsi.com