By Zha Zheng
zha.zheng@freshfields.com

A trademark can lose its distinctiveness with the passage of time, but can its distinctiveness be lost in translation?  A recent trademark case in China raised this issue, in addition to a number of other challenges.

In September 2001 the pharmaceuticals giant, Pfizer Corporation (Pfizer), made an application to the State Administration for Industry and Commerce Trademark Office (TMO) for the registration of the trademark ENVACAR in China, which was rejected.  Dissatisfied with TMO51s decision, Pfizer appealed to the State Trademark Review and Adjudication Board (STRAB).  When STRAB chose to uphold the decision of the TMO, Pfizer initiated a lawsuit against STRAB in Beijing No. 1 People51s Court.  On December 20 2004, the court ruled in favour of STRAB on the grounds that the term ENVACAR cannot be registered as a trademark, because it is a generic term for a type of anti-hypertension drug.  

One of the axioms of trademark law is that a generic term cannot be registered.  In China, this axiom is embodied in Article 11 of the PRC Trademark Law.  The central issue in this case is whether or not ENVACAR is in fact a generic term.  According to STRAB, since the Modern English-Chinese Pharmaceutical Dictionary defines and translates ENVACAR as a generic term for a type of anti-hypertension drug, it cannot be registered as a trademark.  Pfizer, however, alleges that ENVACAR is a fanciful word and is a registered trademark in a number of jurisdictions.  According to Pfizer, the definition of ENVACAR as set out in the dictionary is inaccurate and thus has no authority.

The court disagreed with Pfizer, stating that the dictionary used by STRAB is a formal publication, and therefore its definition of ENVACAR is deemed to be accurate, unless sufficient evidence can be provided to prove otherwise.  In this case, the court did not believe that Pfizer provided sufficient evidence to support its claim.

This case highlights the interesting issue of translation in trademark registration, an issue that is particularly significant in today51s global economy.

In a similar case in the US, Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266 (2d Cir. 1999), the plaintiff registered the term “Otokoyama” as a brand name for its saké with the USPTO. The court later invalidated this registration on the grounds that in Japanese the term Otokoyama is a generic term referring to a type of saké and therefore cannot be registered as a trademark.  The Doctrine of Foreign Equivalents established by this case states that a foreign word or phrase should be translated before assessing its generic status, and the underlying logic of the doctrine is competitor need.  Since Otokoyama is a generic term in Japanese and Japanese competitors need to use it, it should remain a generic term in the US as well.

In the ENVACAR case, the term in question is registered as a trademark in other jurisdictions (e.g., in the US), and is not a generic term in English.  However, according to the dictionary, when translated into Chinese, ENVACAR becomes a generic term referring to a type of anti-hypertension drug.  In the process of translation, the term loses its distinctiveness and becomes generic.  Meanwhile, if we apply the underlying logic to the ENVACAR case, the result is still ambiguous.  On one hand, since ENVACAR is not a generic term in English, English-speaking competitors do not need it.  On the other hand, since the term has been translated into Chinese as a generic term, Chinese-speaking competitors may already be using it as such and it could be argued that for the sake of the Chinese competitors, the term should retain its generic status. Which side should prevail?

The difference between the ENVACAR case and the Otokoyama case is that in the latter case, it was the original phrase that had the generic quality, and so the court ruled that it should remain as such.  In the case of ENVACAR, however, it is the original phrase in the original language that is distinct, but loses its distinctiveness through translation.  This leaves us with the question: Should we readily recognize and accept the loss of a term51s distinctiveness due to translation?

Trademark law has come to recognize loss of a trademark51s distinctiveness due to the passage of time.  “Zipper”, “dry ice”, “escalator” and “linoleum” were once all distinct trademarks, but due to their immense success and the passage of time, they have now become generic terms.  In many cases trademark law not only recognizes this possibility, but also explicitly deals with it.  When an “inaccurate” translation turns a trademark to a generic term, and people in one country recognize it as a generic term, isn51t that a reality that trademark law should deal with?

Neither Chinese nor American trademark law addresses this particular question.  If we recognize and accept the inevitability of the loss of distinctiveness in translation, then the ruling on the ENVACAR case was a fair one.  However, is it really acceptable that in today51s global economy, a term that is a protected trademark in some countries remains generic and open to public use in others?  It would appear that we face further challenges.