We term such a mark, in the trademark law sense, as “falling into public domain,” when it becomes generic, which takes its origin from the property law on public domain. Anything in the public domain cannot be exclusively owned by an individual. For genericness, it must be carefully noted that 1) a private intellectual property right may not be taken for public use, unless public interest dominates, and in so doing, reasonable compensation must be accompanied; 2) “public” must be a relevant majority in the public, and not a few interest groups; 3) it is a factual issue whether genericness has taken place, to be decided case by case, not with a preset criterion; and 4) most importantly, once a trademark becomes the generic name for a product, it is permanently lost for exclusive use. This is irreversible and there can be no condition for withdrawing it from the public domain. It can be analogized to the death of a person. When he dies, he is history, and can never be made alive again. If indeed he was resurrected, it would mean that it cannot be established as a medical fact that he died before. As to the effect of the documents (e.g., Medicine Catalog, or “Drug standards”) issued by medical and drug authorities, would it be conclusive evidence that a trademark has become generic when the documents denote the drug by the trademark? These issues have been dealt with in trademark, administrative and patent disputes in the United States. In F.T.C. v. Algoma Lumbar Co. (1934), for example, logging companies on the Pacific coast called their yellow pine (pinus ponderosa) “California White Pine,” when in fact it was far inferior to the real New England white pine. Although the name “California White Pine” had been adopted by the U.S. Bureau of Standards, Supreme Court Justice Cardozo determined that the denomination of “California White Pine” was unsupported by botanical naming rules, and it was an act of unfair competition; therefore the Bureau’s publication carried little weight. In another landmark case, Diamond v.Chakrabarty (1980) (patentability of man-made microorganisms), the Supreme Court noted that the Secretary of Agriculture’s comment that a “plant cannot be a patentable subject matter” was his own personal view; and as Secretary, he was outside his authority to comment on legal issues beyond his professional knowledge. I t i s the authority of the drug administration to oversee the quality of drugs; it is not, however, their authority to determine whether the drug names selected by applicant drug makers are legally trademarks that have become generic; nor do they possess the professional trademark law sense and knowledge to make such findings. Normally (as is understood), the drug administration merely takes whatever names are submitted to it.
Based on the above, it can be seen that the drug administration’s publication carries, at most, referential value in determining whether a trademark for pharmaceutical products has become generic, and cannot be taken as conclusive evidence as such. Conversely, the 散利痛 mark survived a “genericness” challenge in the TRAB cancellation proceeding, which is prima facie evidence that genericness did not take place.
The Court, by following its own Interpretational Promulgation, and relying heavily on evidence from the drug administration’s use of drug names, calling it “statutory genericness,” failed to provide any guidance in this connection.
III. How to determine genericness
History shows many examples of trademarks becoming generic due to improper use or otherwise.
Any business owner in the marketplace would love to see that his product becomes a household word so as to maximize his market share. Often, he would improperly use his trademark as a noun or a verb, rather than an adjective, or he may simply allow consumers to substitute the product name with his mark. For instance, in the case of XEROX® copier, some consumers would say, “I want to buy a xerox,” when in fact he wants a photocopier, or “Can you xerox it for me?” when he wants to photocopy it. Such consumer usage creates a dangerous tendency for XEROX® to become generic.
There are too many sad stories, involving, e.g., thermos, escalator, diesel, cellophane, heroin (originally for an analgesic product), and aspirin, etc. We pick the aspirin case for a comparison as it is more relevant to 散利痛.
Bayer Co. v. United Drug Co. is one of the landmark cases handled by the famous Judge Learned Hand on trademark genericness. Bayer invented the aspirin analgesic product in late 19th century which chemically was “2-ethanoylhydroxybenzoic acid”; Bayer used a generic name, acetylsalicylic acid, and created the trademark ASPIRIN out of “aspire” and in (a Latin suffix commonly used for drug names). Such a fanciful name was clearly distinctive.
During the patent, Bayer was the sole maker of the drug; upon patent expiration in 1904, other drug manufacturers began to produce the same products, but Bayer marked its product packaging with the name “Aspirin,” and sometimes with, and sometimes without “from Bayer.” When this case was brought to trial in 1921, most pharmaceutical manufacturers knew the name “acetylsalicylic acid,” and most pharmacists also knew it but they instead chose to use “Aspirin” as drug name. Consumers, without exception, were unaware of the complex Latin word and the only familiar name was aspirin. The Court found that since 1917, Bayer did not have any control over the use of the mark and had allowed it to become a generic term in the marketplace. Therefore, Judge Hand found the mark ASPIRIN had been degenerated into a common drug name, and was not a trademark, which could no longer be exclusively owned by Bayer.
We could not help but mention the historical background of this case. Bayer was the largest pharmaceutical company in Germany. In 1917, the U.S. joined the Allies for the First World War and confiscated Bayer’s U.S. business operations as enemy property After the War, as winners, England and France took the Bayer trademarks (including HEROIN and ASPIRIN) by force in the Treaty of Versailles. In the United States it was taken, not in the notorious Franco- English way, but through litigation (on barely convincing grounds, though). Objectively, the Bayer spirit must be admired for consistently holding on to the high quality standard for such a simple drug over the past hundred years. Even without trademark protection, the aspirin product is still considered by the majority of the consuming public as uniquely Bayer, which all other drug makers can only hope to catch.
Another edifier from the Bayer case may be that policy considerations for protecting domestic interests must be used carefully so as not to conflict with fundamental principles, in order to find solutions within the range of the established rules. In simple words, a principle does not rule out exceptions, but too many exceptions would eventually swallow the principles.
IV. Conclusion
Any solution of a legal dispute involves a dilemma of finding the law between conflicting interests. In lay terms, the law is not about justice. This would mean that justice on one side is injustice on the other, and one side’s gain is always at the expense of the other’s loss. The solution we are seeking ought to be the general principle. In our advanced probe of the law, what is important is not about who wins and who loses; rather, it is important where the line should be drawn. If the general principle has to give way to special interest, or the principle may be indented at will with exceptions, the principle will no longer be there. A principle is a faith, to insist on principles requires courage; a principle is not just a rule by which we follow the past and to be followed in future; it is a powerful tool to remove dilemmas. Principles are not just a faith of the legal practitioners; it is the confidence of the entire society being placed on the political, judicial and governmental institutions. If we lose sight of the principles, we lose the trust of the entire citizenry. As guardians of the law, we must always be on our alert for the faith.
A trademark dispute can be said at best as a minor conflict between interests among other social conflicts, and “genericness” is anything but significant in the intellectual property arena, which the majority of the population perhaps has never heard of. Yet, this “anything but” could become nothing but significant with societal ripples, reflecting intense market competition in the pharmaceutical industry. At the same time, it could also be a test for our professionalism and our tenacity to abide by the principles.
By Zheng Xiaojun, Teacher at School of Law, Beijing Foreign Studies University.
