Case No. of Second Instance:

(2016) JINGXINGZHONG2609

Plaintiff: Microsoft Corporation

Defendant: Trademark Review and Adjudication Board of SAIC

Details:

    Microsoft Corporation (Microsoft) filed an application for the international registration of the trademark POWERPOINT covering computer services and cloud computing services, under Class 42 with territorial extension to China. The China Trademark Office refused the trademark on the grounds that "the mark is devoid of distinctiveness in respect of the services for which it is used".

   Trademark Review and Adjudication Board of SAIC (TRAB) and the Beijing IP court both held that “POWERPOINT” is a kind of file format developed by Microsoft, the use of it by Microsoft makes consumers generally recognize PowerPoint as the name of a file format rather than as a sign which distinguishes the origin of goods or services. Therefore, the TRAB found that “POWERPOINT” lacked distinctiveness and was unregistrable.

     The Beijing Higher People’s Court noted Microsoft had applied to register the trademark POWERPOINT for computer software in Class 9 in 1999 and had obtained a registration in 2000, and that this registration was still valid. This meant that, in 2000, 'PowerPoint' was not a generic name for presentation software. Since 2000, POWERPOINT as a trademark for presentation software has been known by the relevant public, but this did not weaken the connection between the product and the trademark owner, Microsoft. Instead, it strengthened the connection.

     Further, there was no evidence that other competitors in the same industry were using PowerPoint as a product name or as a software format. There are different trademarks (ex, KEYNOTE, SLIDE and WPS) 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 software.

    “PowerPoint” as a coined phrase in English is original. Given that the documented evidence was insufficient to prove that this had become a generic name, the trademark POWERPOINT could function as a source identifier and was registrable.

    The Beijing High People's Court revoked the first-instance judgment and ordered the TRAB to issue a new decision.

 Comment

    Whether a trademark is generic is judged by general knowledge of related public of the whole country, but it does not mean that a sign which is widely used or recognized by the related public must be a generic name.

     In this case, “POWERPOINT ” is widely used by relevant public for presentation software, but this use did not weaken the connection between the product and Microsoft, instead, it strengthened the connection. Meanwhile, there was no evidence that other competitors in the same industry were using POWERPOINT as a product name or as a software format. Therefore, though POWERPOINT has obtained certain fame as a trademark for software format, it can’t be identified as a generic name, not even as a mark lack of distinctive on the software products.

     The judgment of this case has enriched the judicial practice on generic name on products, which is helpful to better protect the rights of the operators and to avoid the generalization tendency on generic name identification.