What does the term ‘MOCCA’ evoke in your mind, a kind of coffee or a specific brand? This Kat randomly asked this question to her friends currently at the Max Planck Institute for Innovation and Competition Munich. Most of them regarded ‘MOCCA’ as a kind of coffee instead of a specific brand except one Italian colleague who also saw ‘MOCCA (almost phonetically identical to ‘Moka’)’ as referring to the Moka Pot (Italian wiki page for that here). The diverged answers could be interpreted as showing different opinions on where the term is standing on the slope of trade mark genericide (certainly the slope will not be as smooth, or even could have a U-turn; the image below is a simplified schematic).
Trade marks could die; genericide is one of the causes. Examples of such misfortune include the ‘Aspirin’ for acetylsalicylic acid in the United States (Bayer Co. v. United Drug Co., 272 F. 505) and Sony’s ‘Walkman’ for portable media players in Austria (Austrian Supreme Court, Case No. 4Ob269/01i). A gravestone, i.e., a Wikipedia page, shows a list of generic and genericized trade marks.
All this said, a trade mark considered as generic in one country might be valid in another. This post looks into the recent ‘MOCCA’ case in China for coffee-related products.
Background
The disputed trade mark ‘摩卡MOCCA (and picture)’ as shown below, filed by a company named Rui Chang in March 2011, was approved for registration in China in May 2012 (No. 9199914). The goods designated were in class 30 for coffee, cocoa products, coffee flavours (condiments), coffee beverages with milk, chocolate beverages containing milk, plant preparations for coffee substitutes, chocolate sauce, tea beverages, sugar, etc.
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| (‘摩卡’ is the Chinese translation of ‘Mocca/mocha’) |
In September 2015, a company named Huineng Taifeng (HNTF) requested the Trade Mark Office of China (TMO) to cancel the MOCCA trade mark in class 30 due to lack of distinctive character. The request was rejected by the TMO (Decision [2017] No. Y000001) and then the Trade Mark Review and Adjudication Board (Decision [2018] No. 18995), due to HNTF having failed to submit sufficient supporting evidence. HNTF then took the case to the Beijing IP Court.
The first instance
Case reference: (Administrative Judgment No. 3240 [2018], First, Civil Division, 73, Beijing, of Beijing IP Court).
1. The attacks
To establish lack of distinctiveness, HNTF submitted massive evidence in mainly two categories. The first category was about the past: HNTF tried to prove that the term ‘摩卡/MOCCA (mocha)’ was already in existence before the application date of the disputed trade mark. The evidence provided included the following:
• The dictionary definition of ‘摩卡咖啡 (mocca coffee)’.
E.g., the 1998 version of the Longman Modern English-Chinese Dictionary definition: ‘(摩卡) is a coffee exported from Mocha Port in the Red Sea’; the first version of the English-Chinese Dictionary published by the Shanghai Translation Publishing House in 2007: ‘Mocha coffee is a high-quality Arabic coffee’.
• Book and media coverage.
E.g., the book Coffee Blending published by the Guangdong Economic Press in 2001 wrote that ‘Yemen coffee is the original Mocha coffee, named after the old name of the port of Al Mukha today’.
• Introduction and description of ‘Mocha’ by industry associations.
E.g., the Explanation on Issues Concerning ‘Mocha’ issued by the China Beverage Industry Association in 2013 mentioned that ‘Mocha has been generally considered to represent a type of coffee’.
The second category related to the status quo. HNTF aimed at building the perception that consumers view the terms ‘摩卡/Mocca/mocha’ as generic. The following evidence was submitted:
• The use of the said terms by operators in the same industry.
E.g., Costa Coffee, MAAN Coffee, Coffee Bené, Pacific Coffee, Shangdao Coffee in China all had relevant pages with the content of mocha coffee beverages on their websites.
• Consumers’ perception of online platforms.
E.g., HNTF referred to the 21 replies under the question of ‘what is the difference between latté and Mocha coffee?’ on Zhihu.com, a Q&A platform in China comparable to quora.com.
The evidence above is common practice as mentioned in, for instance, article 10(1) of the Provisions of the Supreme People’s Court on Several Issues concerning the Trial of Administrative Cases involving Trade Mark Authorization and Confirmation: National standards and industry standards, or the professional reference books, dictionaries, and other items may be used as references for recognizing the common name established by usage.
Evidence No. 15 seems to be the winning strike containing the significant evidentiary value. Particularly, the agent of HNTF conducted multiple undirected street survey activities in several areas at Beijing, Dalian (of Liaoning Province, in Northeast China), and Chengdu (Sichuan Province, in Southwest China), all with notary staffs’ site supervision. At each site, 200 questionnaires were collected and the results were:
• Beijing: 95% of the respondents knew ‘摩卡’ coffee, and all of them regarded ‘摩卡’ as a specific taste of coffee instead of a brand;
• Dalian: 89% of the respondents knew ‘摩卡’ coffee, and 91.01% of them regarded ‘摩卡’ as a specific taste of coffee, whilst the rest took the term as a brand of coffee;
• Chengdu: 80% of the respondents knew ‘摩卡’ coffee, and 81.9% of them identified ‘摩卡’ as a specific taste of coffee while the rest saw the term as a brand of coffee.
Similar street surveys conducted in Shanghai and Guangzhou all presented similar results.
2. The defence
Rui Chang argued that the disputed trade mark was an originally designed combination of verbal and figurative elements with the fanciful word ‘MOCCA’. It could clearly indicate the origin of goods, for it has gained strong distinctiveness and high visibility as a well-known mark thanks to the long-term investment and extensive use. Particularly, Rui Chang claimed that it had actively taken measures to prevent the disputed mark from being used improperly by other parties and safeguard the corresponding relationship between the disputed mark and the approved goods in class 30.
3. The court’s decision
The Court of the First Instance upheld all the evidence from HNTF regarding both the past and the status quo. As to the street survey evidence, the court affirmed the approach that covered different cities, with notary staff on site, and targeted non-specific groups. (Kat’s note: Here is a pause. The Court did not consider the approach as indestructible. Rather, the affirmation was made upon the fact that, to quote the exact words of the ruling, ‘Rui Chang did not provide corresponding counter-evidence’.)
On the sign per se, given the phonetic similarities between ‘摩卡’ and ‘MOCCA/mocha’, and also that some dictionaries translate ‘MOCCA’ as ‘摩卡’, the court basically treated the three terms as interchangeable. The figurative elements, i.e., the coffee beans, were deemed to have added no distinctive character to the sign, and they merely described the goods to which the mark was related. That reminds this Kat of the SWISS WOOL mark in the EU (Classes: 17, 22, 24, 25, 27, 35), which was considered non-distinctive for ‘the figurative elements repeat and reconfirm the meaning of the word elements SWISS and WOOL’ (anyhow, it stays in this Kat’s mind!).
Furthermore, as to the administrative ruling in which another trade mark from Rui Chang (No. 515218, also in class 30), as shown below, was considered as a well-known mark, the court took it merely as indirect evidence of Rui Chang’s use of the very mark (not the disputed trade mark). Unsurprisingly, that could not reflect how the disputed trade mark was being used, the length of time, market share, etc. nor could it prove a sole correspondence between the disputed mark and Rui Chang had been successfully established. Other than that, Rui Chang did not manage to submit any direct evidence regarding the manners and scales of using the disputed mark.
The court then addressed the rationale of revocation, that is to avoid maintaining rights over non-deserving signs. It said that the assessment should be about whether the disputed trade mark has become a generic term, not about the effort the trade mark proprietor had made.
In view of the foregoing, the disputed trade mark was revoked due to loss of distinctive character.
The second instance
Case reference: (No. 2540 [2020], Final, Administrative Division, Beijing, of the High People’s Court of Beijing Municipality).
The Beijing High People’s Court upheld Beijing IP Court’s ruling. Particularly, it pointed out that the documented evidence (submitted by Rui Chang) merely proved activities of using the disputed trade mark and not the establishment of the one-to-one corresponding relations between the trade mark and Rui Chang. The appeal was thus dismissed and the decision regarding HNTF’s request must be remade.
Comments
It is the trade mark proprietor’s responsibility to keep their marks ‘alive’ as an indicator of commercial origin in consumers’ minds: vigorously in a way that exists but is not overly popular; otherwise, the thin line between being famous with becoming generic might be broken. The trade mark proprietor’s responsibilities start way early from at least the moment they decide which sign to choose.
This case also reiterates that the consumers’ perception of the primary significance of a sign/term, referring to as a product or the producer, is the ultimate parameter in deciding trade mark’s genericide. In that regard, the HNTF agent’s modalities of getting their teeth into the consumers’ side by conducting street surveys and collecting random consumers’ perceptions, in multiple cities under the notary staffs’ supervision, certainly will be inspirational for many in future practice.
[Originally published on The IPKat on 26 July 2021]