Trademark MOCCA Cancelled As Generic Name In China – Intellectual Property

In China, generic names shall not be registered as trademarks
under Article 11 of the Chinese Trademark Law. If a trademark
becomes a generic name or is later found to be a generic name, the
trademark will be vulnerable to cancellation under Article 49. The
application of this provision is well illustrated in a recent
typical case where the Beijing High People’s Court made a final
ruling to cancel the trademark MOCCA in English and Chinese which
is proved to be a generic name. I would like to introduce the case
through this article.

In 2011, Ruichang Trading Co., LTD. (“Ruichang”) filed
an application for the trademark MOCCA in English and Chinese
(stylized), No. 9199914, with the China National IP Administration
(CNIPA), which was approved of registration in May 2012 in class
30.

In 2015, Beijing Huineng Taifeng Information Consulting Co.,
LTD. (“Huineng Taifeng”) requested for cancellation of
the trademark because it has become a generic name relating to
coffee. The CNIPA considered the submitted evidence insufficient to
prove so and decided to maintain the registration.

In 2017, Huineng Taifeng appealed. In 2018, the appeal board of
CNIPA upheld that the provided evidence is insufficient. Huineng
Taifeng then filed a lawsuit with the Beijing IP Court in the first
instance and overturned the decision. The case was finally appealed
to the final court, namely the Beijing High People’s Court.

On May 14, 2021, the Beijing High People’s Court finally
decided to uphold the first-instance ruling that the trademark has
become a generic name on coffee products and thus the registration
on goods “coffee; coffee flavoring (seasoning); coffee
beverages with milk; botanicals used as coffee substitutes”
should be cancelled, but the registration on the remaining goods
“cocoa products; chocolate drink containing milk; chocolate
cream; tea drinks; sugar” should be maintained.

• Highlights of the ruling:

In both rulings, the courts held that the nature of generic name
should be judged according to the specific goods. Where a party
claims that the trademark has become a generic name of a commodity,
it may submit such evidence as dictionaries, reference books,
national or industrial standards, confirmation from relevant
industrial associations, market survey results, evidence of market
use, and other entities’ use of the trademark on the same
commodity. In particular, the Court elaborated the five points as
follows:

1. The origin of trademark: Upon examination, the
   term “Mocca” is found to be a port city on the Red Sea
   coast of Yemen. As early as in the 16th and 17th centuries, Mocca
   was the world’s largest coffee trading center. The term had a
   specific association with coffee products prior to the filing date
   of the trademark and was not originally created by Ruichang.

2. The consumers’ cognition: According to the
   consumers’ comments on mocca coffee sold in different coffee
   shops and questionnaires in Beijing, Shanghai, Guangzhou, Dalian
   and Chengdu, around 80% to 90% of consumers knew about mocca and
   thought the term refers to a coffee flavor rather than a coffee
   brand.

3. The use in the same business: It was found
   that many coffee chain shops, such as Costa Coffee, Maan Coffee,
   Coffee Bene, Pacific Coffee and UBC Coffee, offer mocca-flavored
   coffee. Many instant coffee brands, such as Nestle, Maxim and
   Mings, have launched mocca-flavored coffee, and many other
   companies sell special mocca coffee equipment. The evidence shows
   that the term has been widely used as a kind of goods or flavor by
   other competitors.

4. Other parties’ introduction and news
   reports: In books, newspapers, periodicals, media, there
   are a lot of introductions of mocca coffee. Some were published as
   earlier as in 1990 and have covered such local newspapers and
   professional magazines as China Business Daily, Global
   Times, Food Industry, etc. In most reports and
   articles, the term is mentioned as a coffee flavor or a kind of
   coffee. The reports reflect the consumers and competitors’
   cognition, which further proves the public cognition.

5. The dictionary meanings: Such physical and
   online dictionaries as Oxford Dictionary and Baidu
   Dictionary, Bing Dictionary and Youdao
   Dictionary have adopted the term as “a kind of
   coffee” or “a drink made of chocolate, coffee and
   milk”, which also strongly prove the nature of a generic
   name.

From the case we can learn the following important trends or
lessons:

1. On the offensive side, the strong evidence to support
   generic-name cancellation should carry tight connection with the
   targeted goods, particularly in terms of origin of the trademark
   and the public cognition. In this case and other precedents, the
   courts often accepted such strongly convincing evidence as National
   Library’s reports, dictionary entries, and relevant industrial
   associations’ confirmation.

In this generic-name cancellation case, the questionnaires were
accepted by the court, which very rarely happens in China. In most
event, the Chinese courts or authorities do not accept the
questionnaires or survey results. The relevant parties should
continue to use caution to collect and submit this type of
evidence, despite this precedent.

2. On the defensive side, in order to avoid generic-name
   cancellation, the owner should take the initiative to select or
   design a more distinctive word trademark and use the trademark as
   an adjective to modify nouns or its goods or services, not as a
   noun or name to represent its goods or services. In this case, I
   personally consider the term “Mocca” not inherently
   distinctive. Neither has the term acquired distinctiveness through
   long-term extensive use.

At the same time, the owner should try to prevent others from
using the term as nouns. If the media and competitors use the
trademark as nouns in business or dictionaries, the owner should
take immediate steps to stop the trend. Indifference or delayed
actions might put the trademark at risk.

3. The CNIPA and the courts have no consensus on evidence of
   generic name. The CNIPA is stricter than the courts. The parties
   concerned should prepare more time and resources.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.