Lost in Translation: The ENVACAR Case

February 28, 2005 | BY

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By Zha [email protected] trademark can lose its distinctiveness with the passage of time, but can its distinctiveness be lost in translation? …

By Zha Zheng
[email protected]

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.

The Facts

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.

The Issue and the Court51s Reasoning

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.

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