How to avoid the headache of your brand’s ‘genericisation’

One of the major bright lights in China’s new Trademark Law, which entered into effect on 1 May 2014, is that it specifies the system of cancellation on the legal basis of genericisation.

The second paragraph of article 49 of the Trademark Law specifies that if a registered trademark becomes the generic name of the good for which it has been approved, any entity or individual may apply to the Trademark Office to have the registered trademark cancelled.

From the new provision, we can discern the following points: (1) in contrast with the law and practice before the implementation of the new Trademark Law, once a registered trademark becomes the generic name of the good for which it has been approved, the registration of that trademark can be cancelled. Now, not only are generic names not able to be registered at the time of trademark registration, but a trademark may be cancelled after it has been successfully registered, if it becomes genericised; (2) anyone may apply to have a genericised trademark cancelled; and (3) the system of cancellation based on genericisation should be limited to the goods or services for which a trademark is approved.

Yao Wei is a senior associate at Chang Tsi & Partners and head of the trademark practice group; Huang Li is a junior associate at the firm