Written by IP Lion
For hotpot fans, qianye tofu (千页豆腐, also translated as “thousand-page tofu”) should be a familiar dish. Benefit from its special preparation method, the taste of qianye tofu is more elastic than traditional tofu.
(Photo from the Netease News)
In 2014, a food company in Suzhou (“Suzhou Company”) successfully registered “Qianye” (千页) as its trademark (“Qianye”), and the registered type is tofu products. With the development of the food industry including the hot pot industry, qianye tofu was more and more well-known by the public and widely used to refer to the specific tofu mentioned above. Therefore, in 2016, a food enterprise in Shanghai (“Shanghai Company”) insisted that Qianye has become a commodity name in the field of bean products, which can no longer be distinguished from its sources. In the argument of the Shanghai Company, qianye tofu has lost the significant basis for the use of the trademark, and thus applied to the authority for the cancellation of the registration of Qianye.
On November 13, 2020, the State Intellectual Property Office (“IP Office”) made a decision (商评字[2020]第291437号) to maintain the registration of Qianye. The Shanghai Company refused to accept this decision and filed an administrative lawsuit in Beijing Intellectual Property Court (“Beijing IP Court”) against the IP Office. However, the Beijing IP Court rejected Shanghai Company’s claim. In this regard, the Shanghai Company appealed to Beijing Municipal High People’s Court (“Beijing High Court”), and was finally supported by Beijing High Court in April 2022 by ordering the IP Office to make a new decision.
(Photo from www.newtonghua.com)
What’s interest is, in this case, the Beijing High Court held that for the degradation of a trademark (from a trademark to a general name of the goods it registered to use), factors such as the time standard, the subject standard, the regional standard, the commodity standard and the standard of proof shall be taken into consideration comprehensively and shall not take the subjective fault of the trademark owner as a premise. In other words, even if registrants have no fault or malice, trademarks can still be regarded as degenerated into a common name for objective reasons. In this case, even when the Suzhou Company has no intentional fault, the Qianye trademark could still be found as degenerated into a common name following the change of the industries.
Congratulations to the manufacturers of qianye tofu, and please produce more delicious and healthy tofu to us.
News sources (in Chinese): http://www.foridom.com/index.php/Index/article/id/1008
Court judgment (in Chinese): https://www.bjcourt.gov.cn/cpws/paperView.htm?id=fd62315335d14c07a9caf8ee337dde57&n=1
Written by IP Lion