Recently, NTD IP Attorneys (NTD), representing a well-known International Chemical Enterprise, filed two invalidation actions against trademarks that were likely to cause public confusion. After examination, the China National Intellectual Property Administration (CNIPA) ruled that the disputed trademarks violate Article 10.1(7) of the Trademark Law and therefore should be invalidated.
Case Overview
The two disputed trademarks “PCR PC” were filed by a third party in 2016 and registered in Class 1 ("unprocessed plastics; unprocessed synthetic resins, etc.") and Class 17 ("weatherstripping materials; plastic welding wires, etc."), respectively, and were assigned to the respondent in 2020 and remained valid registered marks. The trademarks consist of “PCR” and “PC,” acronyms for “post-consumer recycled” and “polycarbonate” respectively. Thus, the trademark directly refer to the generic term “post-consumer recycled polycarbonate” in combination.
In this case we argued that:
• the disputed trademarks are generic names for the goods and are lack of distinctiveness;
• the use of disputed marks on the designated goods may easily mislead the public regarding the quality or other characteristics of the goods, and were therefore deceptive;
• the respondent had filed 435 trademark applications, including multiple trademarks consisting of industrial generic names, violating the principle of good faith and harming the order of trademark registration and public interest.
The respondent replied that:
• “PCR PC” is a coined mark with no meaning, and it was not generic and thus distinctive;
• The use of the disputed trademarks on the designated goods was not deceptive and would not cause public confusion;
• multiple similar trademarks had been approved previously;
• the registration complied with legal requirements.
After examination, CNIPA held that the disputed trademarks were likely to cause relevant public to misunderstand the category, material, or other characteristics of the goods, thus violating Article 10.1(7) of the Trademark Law; the evidence provided by the respondent was insufficient to prove that “PCR PC” had been used as a trademark on the designated goods or had acquired distinctiveness through use. CNIPA also emphasized that trademark cases were examined individually, and the registration of other trademarks could not justify the registration of the disputed marks. Accordingly, CNIPA invalidated the trademarks pursuant to Article 10.1(7), Article 44.1, Article 44.3, and Article 46 of the Trademark Law.
In this case, the NTD team developed a multi-dimensional evidence collection strategy and guided the client through a comprehensive gathering process. Evidence included: relevant industrial standards; information on traceability certification agencies for “PCR” (post-consumer recycled plastics); academic journals and magazines referring to “PCR”; articles from digital media and WeChat official accounts regarding “PCR” and “PC”; the respondent’s website, exhibition materials, and product catalogs; competitors’ product catalogs, exhibition displays, and official websites; foreign websites and media using “PCR” as a generic term; and the respondent’s trademark portfolio. This case demonstrated NTD’s exceptional capabilities in evidence organization, legal research, and persuasive argumentation in handling complex, highly specialized intellectual property disputes.
NTD will remain committed to providing efficient and precise intellectual property strategy planning and dispute resolution for domestic and international clients, leveraging its deep understanding of laws and regulations, industrial expertise, and insight into client needs to safeguard innovation and uphold market fairness.
These two cases were handled by Attorney Lily Fu and Attorney Steve Liu at NTD IP Attorneys.
Lily Fu
Steve Liu
