The generic name defence in trademark infringement cases

In a trademark infringement lawsuit, the alleged infringer may avail the defence that the trademark involved in the case is a generic name in order to claim that no trademark infringement has been committed. In this article, the trademark infringement case between Guinness World Records (GWR) and Chery Automobile is cited as an example for exploring the factors to be considered in determining whether a trademark is a generic name in a trademark infringement case.

GWR, the plaintiff to this case, holds multiple registered trademarks of “Guinness”, “吉尼斯世界纪录” (Guinness World Records), and “GUINNESS WORLD RECORDS” on goods and services of category 35 and category 41. Since 10 April 2014, Chery, the defendant to this case, has extensively used the above-mentioned Guinness series of trademarks in its promotional activities and campaigns of the Chery Arrizo Guinness China Challenge Tour.

In June 2015, GWR filed a lawsuit against Chery for trademark infringement and unfair competition. In August 2017, the Foshan Intermediate People’s Court, in its first-instance judgment, found that Chery has infringed upon the trademarks of GWR. This case is currently undergoing second-instance proceedings.

Tracy Shen is a partner at Chang Tsi & Partners. She can be contacted on +86 10 8836 9999 or by email at tracyshen@changtsi.com

Nancy Qu is an attorney-at-law and patent attorney at Chang Tsi & Partners. She can be contacted on +86 10 8836 9999 or by email at nancyqu@changtsi.com