In accordance with the provisions of Paragraph 2 of Article 49 of China’s Trademark Law and Article 65 of the Regulations for the Implementation of the Trademark Law, when a registered trademark becomes the common name of its approved products，any unit or individual may file an application to the Trademark Office of CNIPA (hereinafter referred to as the Trademark Office) for cancelling the registered trademark. After accepting the application, the Trademark Office shall inform and limit the trademark registrant to respond within 2 months from the date of receipt of the notification; Trademark Office will not be affected to make decisions if the registrant fails to respond within the time limit. The Trademark Office shall make a decision within 9 months from the date of receiving the application, special circumstances that need to be extended can have extension for 3 months with the approval of the relevant departments of the State Council.

A commodity common name refers to a standardized appellation that is used in a certain scope or a certain industry and reflects the fundamental difference between one type of commodity and another one. It characterizes in extensiveness and normalization, including statutory common name of commodity and conventional common name of the commodity. The statutory common commodity name is the commodity name stipulated or included in China’s relevant laws, national standards, industry standards, industry products or commodity catalogs; and the conventional commodity common name is the name of a certain commodity that has been established and commonly used in a certain scope after being used by relevant public for a long time. To apply for canceling the registered trademark that has been the common name of a commodity approved for usage, an application for revocation with explicit factual basis need to be filed, meanwhile, the evidence materials need to be attached, both application and evidence materials are in duplicate.

There is a process of development and degeneration for a registered trademark to become the common name of its approved commodity, that is, the trademark is not a commodity common name before it is approved for registration, and it evolves and degenerates into a commodity common name after it is approved for registration. When applying for cancellation of a registered trademark that has been the common name of the approved commodity, the evidence submitted should focus on proving the process of evolution and degradation. The internal reason why a registered trademark becomes a common name of a commodity is the improper use and management of the registrant, that is to say, the registrant’s ineffective protection and improper use of the trademark in the process of using it after acquiring the exclusive right reduce even lose the distinctiveness of the trademark, making it degenerating into a common name of commodity. The external cause lies in factors of third-party like competitors, for example, other people use a registered trademark as a commodity name or use it as a commodity name in dictionaries, works, and media publicity, and the trademark registrant is negligent to exercising the right, causing the registered trademark become a common name of commodity.

As for the cancellation of a registered trademark that has become a common name of a commodity, the “Regulations of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases of Trademark Authorization and Confirmation” points out that, the one belonging to the common name of commodity in accordance with legal provisions or national standards and industry standards shall be identified as a common name; the one that is widely recognized by relevant public as being able to refer to a type of commodity shall be identified as a conventional common name; the one being listed as commodity name in professional reference books, dictionaries, etc. may be as a reference for identifying a conventional common name. A conventional name is generally judged on the basis of common cognition of the relevant public nationwide. For commodities that are fixed in the relevant market formed due to the historical tradition, local culture, geographical environment, etc., the appellation commonly used in it can be determined as common name. It shall be noticed that only Internet evidence is not authoritative to identify conventional common names.

From CHINA Intellectual Property Right Net

March 29th, 2022