Yan WANG
Chinese Attorney-at-Law

Abstract: The distinctiveness of a trademark is not static, but a dynamic, changing factor. A trademark is not in a safety box after registration. Improper use of the trademark or insufficient awareness of trademark protection may lead to the trademark with distinctiveness becoming the generic term of the relevant goods, and thus may be cancelled due to the loss of distinctiveness.
 
The distinctiveness of a trademark refers to the characteristics that a trademark should possess which are sufficient to enable the relevant public to distinguish the source of goods or services, specifically, it means that the trademark can enable consumers to identify and remember, and can play the function and role of indicating the source of goods or services. Pursuant to the relevant provisions of the Trademark Law of the People's Republic of China, “distinctiveness” is one of the indispensable requirements for a trademark to be approved for registration.
 
The Trademark Examination and Review Guidelines enumerates several common types of signs that do not possess distinctiveness, such as overly simple lines, ordinary geometric figures, daily business venues, corporate organizational forms, common greetings, etc.
It can be seen that many signs naturally lack distinctive features as trademarks. These signs have been widely used in the industry or amongst the relevant public, and belong to public resources. As such, if signs lack of distinctiveness are allowed to be registered as trademarks, it will deprive other producers or operators of the legal right to use the signs legitimately, which will disrupt the market order of fair competition and adversely affect the healthy development of the industry.
However, the distinctiveness of a trademark is an interesting thing, and it is not set in stone. It does not mean that some signs that naturally do not possess distinctiveness of a trademark can never obtain trademark registration, and a sign that has obtained registration is not guaranteed to always possess distinctiveness. The use of trademarks is the main reason for the change in the distinctiveness of trademarks.

1. Acquisition of Distinctiveness of a Trademark
The distinctiveness of a trademark can be acquired through use. Nongfu Spring Ltd.’s (“Nongfu Spring”) “ ” trademark is a typical example.

Based on public information, the 17.5° orange of Nongfu Spring “has a thin skin, full flesh, sufficient moisture, sweet and sour taste, and enjoys a high reputation in the market”. It was named 17.5° because the United States Department of Agriculture (“USDA”) grading standard defines the sugar-acid ratio of Class A orange juice in the range of 12.5-20.5° and 17.5° is just right. Therefore, 17.5° as a descriptive word for the sweetness and acidity of oranges did not possess the distinctiveness of a trademark. When Nongfu Spring filed the application for the trademark, it was rejected on the grounds that it was devoid of distinctiveness. The former Trademark Review and Adjudication Board (“TRAB”) held that the applied-for trademark “17.5°” was only composed of “17.5°” in ordinary prints, and should such expression be used as a trademark with respect to trees, grains (cereals), live animals, fresh fruits and other goods designated under the application, it would  easily cause consumers to believe that it was the ratio of sugar acidity of the goods or the temperature for production, processing, edible storage, etc. The applied-for trademark merely directly indicated the quality and other characteristics of the designated goods, and lacked distinctiveness features. The mark cannot function as a trademark to indicate the source of origin, which constituted the circumstance in which it could not be registered as a trademark as stipulated in the Trademark Law.

Unsatisfied with the refusal appeal decision, Nongfu Spring appealed to the Beijing Intellectual Property Court (“Beijing IP Court”), and submitted a large number of use evidence of the applied-for trademark in the lawsuit, such as the Authorized Distribution Agreements of 17.5° orange, the order lists, the sales statistics tables, the product waybills, the advertisement production contracts,  invoices and the corresponding advertisements placed on various media, library search report issued by the China National Library, the planning of large-scale publicity activities, the audit reports, various honor certificates, etc., which included the evidence regarding protection of “17.5°” trademark rights and the judgment where the court has determined that “17.5°” constitutes “a unique name of well-known product”. Subsequently, the Beijing IP Court held that, according to the evidence submitted by Nongfu Spring, the applied-for trademark enjoys a relatively high reputation and has established a relatively stable connection with Nongfu Spring through extensive publicity and use, and as such, the applied-for trademark belonged to the circumstance where distinctiveness was obtained through use and could be registered as a trademark.

Based on the above case, should an entity claim that the distinctiveness has been acquired through use, it is a necessary prerequisite that it should be able to submit a large amount of extensive evidence of use with respect to the applied-for mark. Furthermore, in practice, there are two more points that require special attention.

First of all, the designated goods or services should be limited to those the trademark is actually used on. For example, the word “apple”, as a type of fruit, is a generic name, but it has distinctiveness when used in relation to mobile phones and can be approved for registration.

Second, special attention should be paid to the way how the trademark is used. If the mark is used together with other marks, the distinctiveness of the said mark should be distinguished from other marks. Otherwise, it may adversely affect the judgment whether the mark itself has acquired distinctiveness through the use. In the case of the refusal appeal of the trademark “EXPANDING HUMAN POSSIBILITY” (IR No. G1431621), the China National Intellectual Property Administration (“CNIPA”) held that the mark used as a trademark is not likely to make the relevant public recognize it as an indication of source of service, and thus lacks the distinctiveness that a registered trademark should have. Furthermore, most of the evidence for the promotion and use of the mark submitted by the applicant includes other trademarks registered by the applicant, such as “Rockwell Automation”. Therefore, it is not sufficient to prove that the disputed trademark has become distinctive with respect to the designated service through use. Based on the above, in order to enable a mark to acquire distinctiveness through use and achieve registration successfully, it is necessary to pay special attention to ways and methods when using the mark, and try to avoid using the mark jointly with other trademarks, especially registered trademarks, so as not to encounter difficulties in submitting evidence of use in the subsequent proceedings.

2. Loss of Distinctiveness of a Trademark
 
A registered trademark becoming the generic name of the designated goods approved for use, means that a registered trademark that originally possessed distinctiveness generalized into the generic name of the goods approved for use in the actual use in the market. The Trademark Law in China stipulates that the generic name of goods is a sign that lacks distinctiveness and cannot be registered as a trademark. Where a registered trademark becomes the generic name of goods approved for use, any entity or individual may file a cancellation action against such registered trademark with the Trademark Office.

In the cancellation action against Procter & Gamble’s (“P&G”) trademark “拉拉裤 (La La Ku – Pull-up Pants)” (Reg. No. 16712415), the Trademark Office held in the initial cancellation action that the disputed trademark enjoyed a high reputation after a long period of wide publicity and use, and the evidence submitted by the applicant was insufficient to prove that the disputed trademark had generalized into a generic name for goods of disposable baby diapers. As such, the registration of the disputed trademark was maintained. Afterwards, the TRAB held after review that, in many articles introducing “Pull-up Pants” during 2011 to 2017, the word “拉拉裤 (La La Ku – Pull-up Pants)” refers to a kind of panty-style diapers, and many operators in the industry use “拉拉裤 (La La Ku – Pull-up Pants)” as the goods name of panty-type diapers. “拉拉裤 (La La Ku – Pull-up Pants)” has become the goods name used for searching the panty-type diapers on the two major e-commerce platforms of JD.com and T-mall, as well as Baidu search engine, which are with high usage rates in China. Therefore, the majority of operators and consumers in the same industry generally use the word “拉拉裤 (La La Ku – Pull-up Pants)” as the generic name of this panty-type diapers, but do not identify it as P&G’s registered trademark. In addition, P&G’s use of “拉拉裤 (La La Ku – Pull-up Pants)” is “帮宝适(PAMPERS in Chinese) /PAMPERS拉拉裤(La La Ku – Pull-up Pants)”, instead of using “拉拉裤 (La La Ku – Pull-up Pants)” alone, and its advertising slogan emphasizes the wearing characteristics of “pulling and putting on”, so that the public is more likely to identify “拉拉裤 (La La Ku – Pull-up Pants)” as the name of a type of diaper. Although P&G appealed the cancellation appeal decision with the Beijing IP Court, the first-instance judgment basically supported the appeal decision, holding that “拉拉裤 (La La Ku – Pull-up Pants)” had become the generic name of the goods approved for use, and rejected P&G’s litigation claims.
In the cancellation action against the trademark “ (摩卡 (Mo Ka – Mocha in Chinese) MOCCA and device” (Reg. No. 9199914), the Trademark Office, in both the cancellation action and cancellation appeal, held that the evidence submitted in the case was insufficient to prove that the disputed trademark had evolved into a generic name for goods such as “coffee” after registration. However, in subsequent administrative litigation proceedings, the court of first instance found that “摩卡 (Mocha in Chinese)” was not originally created by a third party, but had the meaning of referring to a port city located on the Red Sea coast of Yemen (as early as the 16th and 17th centuries, Mocha was the largest coffee trading center in the world). As such, “摩卡 (Mocha in Chinese)” had a specific association with coffee goods prior to the application date of the disputed trademark. In the meanwhile, the evidence in the case (including the results of the consumer awareness survey, the status of mocha flavored coffee provided by the operators in the same industry, relevant books, newspapers and periodicals, introduction articles from online media, dictionary definitions, etc.) shows that, no matter whether from the consumer's cognition, the use by operators in the same industry, or from the introduction and reports of third parties, at the time of trial of this case, the relevant public has generally considers that “Mocha” refers to a type of coffee products, and the above cognition is not limited to specific regions, but is a common term nationwide. “Mocha” has become a generic name for coffee products. The Trademark Office finally made a new decision to cancel the registration of the disputed trademark based on the effective judgment.

Based on the above cases, a trademark is not in the safety box after registration. Improper use of the trademark or insufficient awareness of trademark protection may lead to the trademark with distinctiveness becoming the generic name of the relevant goods, and the registration may be cancelled due to the loss of distinctiveness. Some trademark owners themselves do not standardize the use of registered trademarks and use registered trademarks as product names, and the large scale of use has led to the adverse consequences of trademark becoming generic term. Some trademark owners have allowed other entities to use their registered trademarks as product names, and have not actively taken appropriate right protection measures to stop them, resulting in the genericide of trademarks.

In summary, distinctiveness, i.e. the characteristics of a mark sufficient to enable the relevant public to distinguish the source of goods or services, is one of the elements for the approval of registration of a trademark. It is not static, but a dynamic, ever-changing factor. With the use of trademarks and changes in people’s ideologies, the distinctiveness of a trademark may be obtained from scratch, but may also be lost from existence to nothing. Therefore, when a trademark application is rejected on the grounds of lack of distinctiveness, the applicant should not give up easily. There is still hope of achieving registration through the accumulation of a large amount of use evidence. On the other hand, after the trademark registration, the trademark owner should not take it lightly, and in daily use, it is necessary to pay attention to whether the use of the trademark is standardized, whether there is a trend of being generalized, and as a trademark owner, it is also necessary to actively protect its trademark rights and avoid the loss of distinctiveness of its trademark as much as possible.