On How to Prevent the Generalization of Trademarks

Author | Intellectual Property Center, Lawyer Luo Haopeng

The most direct function of a registered trademark is to identify the service and source of the goods, and it is the "signboard facade" of the enterprise's goods. When the registered trademark is universally named, it will be difficult to play the role of identifying the service and source of the goods, and the commercial value of the registered trademark will be lost.

A generic name refers to the name of a certain type of commodity that is widely used within a certain range. Article 10 of the Supreme People's Court's "Provisions on Several Issues Concerning the Hearing of Administrative Cases of Trademark Authorization and Confirmation" stipulates some criteria for judging "generic names": Where the trademark in dispute is a legal commodity name or a customary commodity name, the people's court shall determine that it belongs to the generic name referred to in Article 11, Paragraph 1 (1) of the Trademark Law.

If it is a common name of a commodity according to legal provisions or national standards or industry standards, it shall be recognized as a common name of. Where the relevant public generally believes that a certain name can refer to a class of commodities, it shall be recognized as a customary common name. If it is listed as a commodity name by professional reference books, dictionaries, etc., it may be used as a reference for identifying a customary common name.

According to the provisions of this article, common names include legal and customary names. Legal common names refer to common names determined by legal provisions or normative documents such as national standards and industry standards. Customary common names refer to common names generally recognized and used by the relevant public.

If it is listed as a commodity name by professional reference books and dictionaries, it can be used as a reference for identifying a commonly accepted name.

In order to protect the distinctiveness of registered trademarks and prevent them from gradually becoming the common names of certain goods or services, the author discusses how to prevent the common names of registered trademarks based on practical experience.

First, when applying for a registered trademark, you should choose a more distinctive sign to apply for

They decrease in order of significance.orderLook, significance intensity can be divided into five categories: imaginary signs, arbitrary signs, suggestive signs, descriptive signs, and generic names. Among them, the concocted logo is a trademark composed of invented words and words without specific meaning, such as LEGO Lego, McDonald's; any trademark is composed of common words and has no obvious connection with goods or services, such as Xiaomi mobile phones and Apple computers; the implied trademark is composed of common words, which suggest the attributes or characteristics of the goods or services in a metaphorical and implied manner, such as Red Bull drinks; a descriptive mark refers to a direct description of the quality or characteristics of the marked goods or services, that is, it can be judged without association or imagination that it belongs to the characteristics of the goods or services.

However, compared with the previous logo, it lacks distinctiveness and is difficult to register as a trademark, but there are also twists and turns, such as the CSI 300 index, the people of the Beijing Intellectual Property Court have unique and stable directionality from the subject of use, namely the CSI company, the relevant public awareness of the CSI 300 index is closely related to financial services, and the trademark has been publicized and used by the CSI company for a long time, so that the relevant public will be closely linked with the CSI company, with unique and stable directionality. It is believed that the "CSI 300 index" has obtained significant characteristics through use and can be registered as a trademark.

A generic name is the name of a class of goods or services that is commonly used and is not distinctive and cannot be registered as a trademark.

Therefore, when registering a trademark, preference should be given to the highly distinctive logo for trademark registration.

II. Regulating the use of trademarks

In some trademark infringement proceedings undertaken by the author, I have repeatedly encountered cases where the infringer claims that the trademark owner himself does not regulate the use of the trademark, or even uses the trademark as a commodity name. This factor will affect the judge's freedom of evidence and even influence the judgment result. Therefore, the standardized use of trademarks is very important.

Using "trademark + brand + common name/product name of this type of product" can prevent the generic name of the trademark, let alone use the trademark as a product name.

III. Timely stop the irregular use of others

In addition to regulating the use of trademarks by themselves, they should also be wary of others using their trademarks in a way that "rubs traffic".

Nowadays, the Internet has become the mainstream channel for the public to obtain information. All search platforms, online shopping platforms, media platforms, and social software are platforms for merchants to promote their products. During this process, some merchants do not set product titles or keywords in the form of "trademarks + brands + common names/product names of such products" in order to attract more traffic. They often use some other people's rights trademarks in titles, pictures, and product details. This way of use often also uses other people's rights trademarks as product names or descriptive words. Objectively, it is to play the role of a keyword search, but at the same time, It also weakens the trademark's specific connection to the product.

If you neglect to search or protect your rights, such a phenomenon may occur on a large scale in the market after a period of time, making it easy for the relevant public to generally use the trademark to refer to a certain type of goods. The distinctiveness of the trademark will be weakened, and it may even be diluted as a generic name for a certain type of goods.

Therefore, enterprises need to pay more attention to the situation of their products and trademarks on social and online platforms, and once they find any irregular use of their trademarks, they should stop them in a timely manner to avoid weakening the distinctiveness of their trademarks.

About the Author

Lawyer Luo Haopeng

Deputy Director of the Trademark Law Professional Committee of Zhiheng Intellectual Property Center

Lawyer Luo Haopeng graduated from Southwest University of Political Science and Law and joined Guangdong

in 2017, specializing in intellectual property rights, non-performing asset clearance, various contract disputes, and corporate investment and financing.

Center Profile

Intellectual Property Center

Objective of Zhiheng Intellectual Property Center: To build a first-class intellectual property legal service center.

The Intellectual Property Center has a complete set of specialized intellectual property departments such as patents, trademarks, copyrights, trade secrets, rights protection, international, layout analysis, and operation transactions, forming a complete industrial chain from basic applications, planning and layout, risk prevention and control, anti-counterfeiting rights protection, operation transactions, and international protection.

The Intellectual Property Center is led by a team of first-class intellectual property experts, with a complete service process and an integrated service system. It provides professional legal advice and solutions in various fields of global intellectual property, striving to ensure that every case and project can receive the best solutions developed by experts, so that customers can experience the most rigorous and professional services.

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