China: "POWERPOINT", In Spite Of Its Extensive Use And High Reputation, Is Not A Generic Name And May Be Registered As A Trademark

"POWERPOINT", as a trademark on presentation files software is well known by the relevant public, but this does not sever the relationship between the products and the trademark owner MICROSOFT Corporation. Instead, this reputation has strengthened the connection. The word functions as a source identifier of services, and is registrable as a trademark.

Case Brief

On November 30, 2011, MICROSOFT CORPORATION (MICROSOFT) filed an application for international registration of the trademark "POWERPOINT" covering computer services, cloud computing services etc. in Class 42 with territorial extension to China.

On September 24, 2012, the China Trademark Office (CTMO) refused the trademark on the grounds that "the mark is devoid of distinctiveness in respect of the services for which it is used".

MICROSOFT filed an application for review to the Trademark Review and Adjudication Board (TRAB) who, on January 30, 2015, confirmed the refusal on the grounds that the trademark lacks distinctiveness, as provided by Article 11.1(3) of the PRC Trademark Law, "...(the signs) that otherwise lack distinctiveness...shall not be registered as trademarks".

MICROSOFT filed an appeal with the Beijing IP Court which, on December 18, 2015, issued a judgment maintaining the TRAB's Decision.

The Beijing IP Court held that "POWERPOINT" is a kind of file format developed by MICROSOFT Corporation. The use of the applied trademark by MICROSOFT Corporation makes the relevant consumers generally recognize "POWERPOINT" as the name of such file format rather than as a sign distinguishing the origin of goods or services. Thus the applied trademark lacks distinctiveness and is unregistrable, pursuant to Article 11 of PRC Trademark Law.

MICROSOFT appealed to the Beijing High People's Court.

During the appeal, the TRAB argued that the long-term use of "POWERPOINT" by MICROSOFT had made the relevant consumers recognize the relationship between "POWERPOINT" and the presentation files, so POWERPOINT is a generic name and the relevant consumers would not recognize it as a sign to distinguish the origin of goods or services, hence its lack of distinctiveness.

On December 26, 2016, the Beijing High People's Court issued its judgment revoking the first instance judgment and ordering the TRAB to make a new decision.

The Court of Appeal held that the recognition of a generic name should be based on the general knowledge of the relevant public nationwide. The court explained that a generic name shall not be registered as a trademark if (1) it describes the nature of the goods and is unable to function as a source identifier; and (2) the registration of such name as a trademark would lead to a monopoly over public resources and would harm the interests of other competitors in the industry.

The Court noted that in 1999, MICROSOFT applied for the registration of the trademark "POWERPOINT" for computer software etc. in Class 9 and obtained a registration in 2000, and that such registration is still valid. This means that, back in 2000, "POWERPOINT" was not a generic name for presentation files software products. Since 2000, "POWERPOINT", as a trademark for presentation files software has been known by the relevant public, but this did not sever the corresponding relationship between the products and the trademark owner Microsoft. Instead, it strengthened the connection. Moreover, there was no evidence proving that other competitors in the same industry have been using "POWERPOINT" as the product name or as a software format. There are different trademarks like "KEYNOTE", "SLIDE" and "WPS" etc. for the same types of products owned by different parties. Therefore, the TRAB could not prove that "POWERPOINT" had become a generic name for presentation files software. "POWERPOINT" as a coined word in English is original. Given that the documented evidence was insufficient to prove that "POWERPOINT" had become a generic name, the trademark "POWERPOINT" could function as a source identifier and was registrable as a trademark.

Comments:

The Court of Appeal applied the principle set out by the judicial interpretation of the Supreme People's Court, Provisions on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights (2010), which was recently updated in 2017.

The Provisions stipulates that "In general, the Court shall base its finding of generic name on the situation at the time of the application date of the litigious trademark. Where the de facto status has changed at the time when the litigious trademark is approved for registration, the Court finding shall be based on the situation at the time of registration". In the above case, Beijing High People's Court confirmed that "POWERPOINT" was not a generic name when the class 9 application was filed and approved.

Beijing High People's Court also found that the TRAB did not provide any evidence proving that the situation has changed since the application date. On the contrary, neither the competitors in the same industry nor the relevant public ever used the word "POWERPOINT" as the product name of a software format which was confirmed by the existence of different trademark registrations owned by different parties for the same type of products.

WAN HUI DA represented MICROSOFT Corporation in this case.

The case is listed by the Beijing High Court as one of the Top 10 Innovative IPR Cases of the Beijing Courts in 2016.

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