A Study on the Theory and Tests of Trademark Genericism

• Main Authors: Li-Wen Lu, 呂俐雯
• Other Authors: 謝銘洋
• Format: Others
• Language: zh-TW
• Published: 2013
• Online Access: http://ndltd.ncl.edu.tw/handle/48587402499488255630

碩士 === 國立臺灣大學 === 法律學研究所 === 101 === Once a trademark becomes the generic term for the good or service, it will be cancelled immediately. This process is known as the trademark genericide; and the doctrines to determine whether a term should be deemed “generic”, hence incapable of functioning as a trademark is called genericism. The trademark proprietor will suffer substantial economic loss once upon trademark genericide. However,cancellation of a “generic mark” conforms to the distinctiveness requirement in trademark protection and benefits the public, including the competitors and the consumers. In 2003, Taiwan established the trademark genericism law. Since then,about 20 cases have been submitted to the Intellectual Property Office (herein referred to as IPO) for trademark cancellation. IPO has made 4 decisions to cancel those trademarks in question. However, there is no clear criterion for the making of those decisions. Moreover, there are some inconsistencies left to be resolved. The thesis compiles and conducts research on relevant cases and academic articles in the United States, and strives to provide a framework for our own system of genercisim. Firstly, according to the consumer perception test established in the Bayer case in the U.S., the sole question for determining a term''s genericness is “What do buyers understand by the word for whose use the parties are contending?”instead of the competitors’ use. Secondly, we can adopt the primary significance test, which has been enacted in the Lanham Act. However, since society has changed nowadays and the legal system varies from the U.S. to our country, we should revise it to conform to the reality of our modern society. The revision can be called the modified primary significance test. For example, the standard of proof should be raised to be higher than preponderance of evidence. Besides, as trademarks nowadays are usually hybrid terms that serve dual function: to identify the source of the good and to identify the good itself, we should only consider whether the mark functions as a source-identifier in a commercial context. At last, after applying the modified primary significance test, we should also apply the new effect-on-competition test to review the marketing necessity,so as to accomplish the goal of genericisim. Furthermore, the thesis introduces the “recapture” cases. There are two famous“recapture” cases in the U.S., SINGER and GOODYEAR. The thesis discusses the rationality of this situation and the possibility of a generic term to become trademark by acquiring secondary meaning. Contrary to the trademark laws in the U.K. and Germany, the laws in the U.S. and Taiwan do not admit that generic terms can become trademarks by acquiring secondary meaning. There is a concept of “de facto secondary meaning.” in the U.S. However, once a term can serve the source-identify function, it should be protected as a trademark. Our Trademark Law section 29 should be reviewed. Finally, the thesis introduces many ways to avoid trademark genericiding. They can be categorized into two parts: the use of trademark proprietor himself; and correcting other’s misuse.