Siemens, a German multinational conglomerate company, is one of the world's most prominent makers of medical diagnostics equipment, including CT, MR, DR, PET/CT scanners and systems. Siemens Ltd. China, which was established in China, is a wholly owned subsidiary of Siemens.
In November 2013, Siemens Ltd. China discovered that a company had registered with the Chinese Trademark Office trademarks such as Cloud CT, Cloud PET/CT, Cloud MR, Cloud DR, Cloud MI and their equivalent in Chinese characters for goods including medical diagnostic and imaging equipment and instruments. It appeared that the registration of the said trademarks could have prevented Siemens and other competitors in the same industry from using these names in China.
Siemens Ltd. China therefore, filed an invalidation proceedings action against the registrations with the Trademark Review and Adjudication Board (TRAB).
It was found that in the industrial healthcare sector, particularly in the diagnostic and imaging sector, the initials in the registered trademarks are generic terms for:
CT = Computed tomography
PET/CT = Positron emission tomography—computed tomography
MR = Magnetic resonance (imaging)
DR = Digital radiography
MI = Molecular imaging
In addition, the word “Cloud” has in recent years become a synonym for “cloud computing”, a technical term that is used in almost every sector of industry. According to Article 11 of the Chinese Trademark Law, the following signs shall not be registered as trademarks:
- those only comprising generic names, designs or models of the goods in respect of which the trademarks are used;
- those having direct reference to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which the trademarks are used; and
- those lacking distinctive features other than the aforesaid.
The argument was that the subject trademarks at issue are either generic names or directly descriptive, and thus these trademarks lack distinctiveness.
At the end of 2014, TRAB issued 7 decisions respectively, all in favour of Siemens Ltd. China, declaring the respective registrations to be invalid.