Registrability Destroyed by Dictionary

Pfizer Inc., a US based pharmaceutical giant, lost a lawsuit against a decision made by the Trademark Review and Adjudication Board (TRAB), rejecting its trademark application for "ENVACAR".

In September 2001, Pfizer filed an application for the mark "ENVACAR" in Class 5, with designated goods of pharmaceuticals. The application was then rejected on the ground of being a generic name of a type of anti-hypertension medicine.

Pfizer lodged an appeal to the TRAB against the decision made by the Trademark Office. However, the TRAB upheld the decision on the basis that ENVACAR was defined as a generic name for a type of anti-hypertension medicine in the "Modern English-Chinese Pharmaceutical Dictionary".

Not satisfied with the TRAB's decision, Pfizer initiated legal proceedings in the Beijing No. 1 Intermediate People's Court in September 2004. Pfizer argued that the definition of "ENVACAR" as set out in the dictionary was inaccurate and inappropriate. The dictionary was not authoritative and therefore, it could not be used as evidence. The mark, which was created and owned by Pfizer, had been registered and used in many countries as a trademark. The mark was primarily used for anti-hypertension medicines, but it was also used for other types of medicines. Because of wide use of the mark for anti-hypertension medicine and reputation built up, the TRAB wrongly believed that it was a generic name of this type of medicine.

In a decision made in December 2004 in favor of the TRAB, the court ruled that a definition of a word by a publication could be used to judge the registrability of a mark, unless sufficient evidence is provided denying accuracy and authority of the publication.