By Ms. Wei Cheng, Lawyer at Chofn IP
In China, generic names shall not be registered as trademarks under Article 11 of the Chinese Trademark Law. If a trademark becomes a generic name or is later found to be a generic name, the trademark will be vulnerable to cancellation under Article 49. The application of this provision is well illustrated in a recent typical case where the Beijing High People’s Court made a final ruling to cancel the trademark MOCCA in English and Chinese which is proved to be a generic name. I would like to introduce the case through this article.
- Case brief
In 2011, Ruichang Trading Co., LTD. (“Ruichang”) filed an application for the trademark MOCCA in English and Chinese (stylized), No. 9199914, with the China National IP Administration (CNIPA), which was approved of registration in May 2012 in class 30.
In 2015, Beijing Huineng Taifeng Information Consulting Co., LTD. (“Huineng Taifeng”) requested for cancellation of the trademark because it has become a generic name relating to coffee. The CNIPA considered the submitted evidence insufficient to prove so and decided to maintain the registration.
In 2017, Huineng Taifeng appealed. In 2018, the appeal board of CNIPA upheld that the provided evidence is insufficient. Huineng Taifeng then filed a lawsuit with the Beijing IP Court in the first instance and overturned the decision. The case was finally appealed to the final court, namely the Beijing High People’s Court.
On May 14, 2021, the Beijing High People’s Court finally decided to uphold the first-instance ruling that the trademark has become a generic name on coffee products and thus the registration on goods “coffee; coffee flavoring (seasoning); coffee beverages with milk; botanicals used as coffee substitutes” should be cancelled, but the registration on the remaining goods “cocoa products; chocolate drink containing milk; chocolate cream; tea drinks; sugar” should be maintained.
- Highlights of the ruling:
In both rulings, the courts held that the nature of generic name should be judged according to the specific goods. Where a party claims that the trademark has become a generic name of a commodity, it may submit such evidence as dictionaries, reference books, national or industrial standards, confirmation from relevant industrial associations, market survey results, evidence of market use, and other entities' use of the trademark on the same commodity. In particular, the Court elaborated the five points as follows:
- The origin of trademark: Upon examination, the term “Mocca” is found to be a port city on the Red Sea coast of Yemen. As early as in the 16th and 17th centuries, Mocca was the world’s largest coffee trading center. The term had a specific association with coffee products prior to the filing date of the trademark and was not originally created by Ruichang.
- The consumers’ cognition: According to the consumers' comments on mocca coffee sold in different coffee shops and questionnaires in Beijing, Shanghai, Guangzhou, Dalian and Chengdu, around 80% to 90% of consumers knew about mocca and thought the term refers to a coffee flavor rather than a coffee brand.
- The use in the same business: It was found that many coffee chain shops, such as Costa Coffee, Maan Coffee, Coffee Bene, Pacific Coffee and UBC Coffee, offer mocca-flavored coffee. Many instant coffee brands, such as Nestle, Maxim and Mings, have launched mocca-flavored coffee, and many other companies sell special mocca coffee equipment. The evidence shows that the term has been widely used as a kind of goods or flavor by other competitors.
- Other parties’ introduction and news reports: In books, newspapers, periodicals, media, there are a lot of introductions of mocca coffee. Some were published as earlier as in 1990 and have covered such local newspapers and professional magazines as China Business Daily, Global Times, Food Industry, etc. In most reports and articles, the term is mentioned as a coffee flavor or a kind of coffee. The reports reflect the consumers and competitors’ cognition, which further proves the public cognition.
- The dictionary meanings: Such physical and online dictionaries as Oxford Dictionary and Baidu Dictionary, Bing Dictionary and Youdao Dictionary have adopted the term as “a kind of coffee” or “a drink made of chocolate, coffee and milk”, which also strongly prove the nature of a generic name.
From the case we can learn the following important trends or lessons:
- On the offensive side, the strong evidence to support generic-name cancellation should carry tight connection with the targeted goods, particularly in terms of origin of the trademark and the public cognition. In this case and other precedents, the courts often accepted such strongly convincing evidence as National Library’s reports, dictionary entries, and relevant industrial associations’ confirmation.
In this generic-name cancellation case, the questionnaires were accepted by the court, which very rarely happens in China. In most event, the Chinese courts or authorities do not accept the questionnaires or survey results. The relevant parties should continue to use caution to collect and submit this type of evidence, despite this precedent.
- On the defensive side, in order to avoid generic-name cancellation, the owner should take the initiative to select or design a more distinctive word trademark and use the trademark as an adjective to modify nouns or its goods or services, not as a noun or name to represent its goods or services. In this case, I personally consider the term “Mocca” not inherently distinctive. Neither has the term acquired distinctiveness through long-term extensive use.
At the same time, the owner should try to prevent others from using the term as nouns. If the media and competitors use the trademark as nouns in business or dictionaries, the owner should take immediate steps to stop the trend. Indifference or delayed actions might put the trademark at risk.
- The CNIPA and the courts have no consensus on evidence of generic name. The CNIPA is stricter than the courts. The parties concerned should prepare more time and resources.