Alert: Legal Risks in Trademarks Fading into Generic Names

As stipulated in China’s Trademark Law, the generic name of a product cannot be registered as a trademark because it fails to distinguish the product’s origin from others’. Apart from that, privatization of a generic name through trademark registration might also damage relevant public interests.

The PowerPoint software, part of the Microsoft Office suite, has nowadays become a must-have on personal computers, which self-evidently proves its fame. However, there are also risks in such an evolution from an icon to a generic name, as is revealed in a recent case heard by the Beijing High People’s Court.

What happened was that Microsoft had initially registered in the US the trademark of “PowerPoint” in Class 42 for which it later hoped to seek protection under the Chinese Trademark Law with territorial extension. Yet the process turned out to be quite a tough journey when the company’s application was continuously given red lights by the Trademark Office. In addition, the Trademark Review and Adjudication Board, and the Beijing Intellectual PropertyCourt refused it for the same reason: “PowerPoint” has evolved into a generic name for “slides and presentations”, so it now lacks significance as a trademark on a specific product. Eventually, it was at the Beijing High People’s Court that Microsoft managed to save the “PowerPoint” mark, narrowly.

Microsoft’s “PowerPoint” mark was quite a significant one when conjured and it has acquired a huge fame after use. However, it has nearly been reduced to a generic name entitled to no Trademark Law protection due to problems underlying long-term use and protection. It is thus clear that trademark protection is by no means limited to registration and rights protection, but a long-term cause of risk prevention.

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