Ting Xu, Associate, Trademark Department
On May 26, 2008, the China Trademark Review and Adjudication Board (“TRAB”) of the State Administration for Industry and Commerce (SAIC) made a decision in favor of Changyu Winery Group, upholding its exclusive use of the mark “cabernet” in Chinese （“解百纳”） as a registered trademark. The decision further found that Changyu established “解百纳” as one of its trademarks through its use and did not consider “解百纳” the generic name for these cabernet grape varieties. This means other wineries such as China Great Wall Winery, Dynasty Fine Wines Group Limited and Yantai Weilong Grape Wine Co. are prohibited from using the mark “解百纳”, which may certainly cause damage to these wine makers in marketing their products.
This dispute mainly focuses on the following two issues:
1. Whether “解百纳” directly indicates the main raw materials and the characteristics of the products and accordingly should be considered a generic term for certain wine products;
2. Whether Changyu obtained the characters “解百纳” through its long term use.
According to the decision, “a generic term” that cannot be trademarked is defined as “a product name which is set out in the national standard and/or industry criteria, or accepted by common use”. The Examiner held that “解百纳” is not the name of a grape variety published in the national standard nor the generic term of a wine regulated by the applicable “wine” related industry criteria and standards.
In addition, “解百纳” was not deemed as the generic term accepted in common use. As a generic term, it must explicitly refer to one product and reflect the essential differences between one product from another. However, “Cabernet” has been translated into “解百纳”, “加本力”、“加本纳特”、“卡贝奈特”. The Chinese wording “解百纳” does not establish a substantial and clear relationship with “Cabernet” as it would in English since there are other equally valid translations. Secondly, three grape varieties contain the word “Cabernet”, i.e. Cabernet Sauvignon; Cabernet Franc; Cabernet Gernischt which are translated as “赤霞珠”; “品丽珠” and “蛇龙珠” respectively leading one to conclude that the wording “Cabernet” is merely a prefix to the name of grape varieties. The above three grape varieties are not translated into “解百纳” and thus are not the common use terms.
As for the second issue, the TRAB held that “解百纳” originated from Changyu’s first use beginning in 1936. “解百纳” was registered as a part of Changyu’s trademark and was recognized as Changyu’s trademark by wine magazines, the authorities, as well as the China national food industry association. Through its long term use, “解百纳” has become a trademark for Changyu’s wine and identifies the origins of the wine products. Therefore “解百纳” has developed its distinctive use by Changyu’s over its 70 year history.
However it is obvious that the 6-year dispute regarding the mark “解百纳” has not come to an end since as many as 12 competitors including China Great Wall Winery, Dynasty Fine Wines Group Limited and Yantai Weilong Grape Wine Co., have all claimed to have filed lawsuits against the TRAB with the First Intermediate People’s Court of Beijing. It remains to be seen to what extent the court’s decision will influence the wine industry in China by this case as well as how the court will set an interesting precedent for judging what constitutes a “generic name”.