acts of the Case

The plaintiff is the registered trademark owner of “UNO,” a well-known tabletop card game. The trademark is registered under Class 28, covering goods such as playing cards, board games, chess games, poker cards, and related gaming equipment.

The plaintiff discovered that the defendant was manufacturing and selling a tabletop card game under the name “UMO” and using the marks “UMO” and similar symbols in online and offline retail stores. The plaintiff argued that these marks were confusingly similar to the registered trademark “UNO” and that defendant acted with bad faith, intending to free-ride on the reputation of plantiff’s brand.

The plaintiff initiated legal proceedings, alleging trademark infringement and sought relief, including:

1. An immediate injunction to cease the infringing activities.
   
2. Monetary damages of 2 million RMB for economic losses and legal expenses incurred in enforcing its rights.
   

In response, the defendant contested the validity of UNO’s trademark rights, arguing that “UNO” had become a generic term for a type of card game and, therefore, lacked distinctiveness, making it ineligible for trademark protection.

District Court Judgment

The district court ruled in favor of the plaintiff, finding that:

• Defendant’s use of “UMO” on similar products constituted trademark infringement under Chinese Trademark Law.
  
• Plaintiff’s trademark had distinctiveness due to long-term use and extensive promotion.
  
• Defendant’s actions demonstrated intentional infringement, as the similarity in the marks suggested an attempt to mislead consumers.
  

The court ordered the defendant to:

• Cease all infringing activities immediately.
  
• Pay damages of 400,000 RMB to the plaintiff, considering factors such as the trademark’s reputation, the duration and extent of infringement, and plaintiff’s enforcement costs.
  

The defendant appealed the decision to the Hainan Intellectual Property Court, maintaining that “UNO” was a generic name and not entitled to trademark protection.

Appellate Court Ruling

Upon review, the appellate court upheld the trial court’s decision, ruling that:

• Distinctiveness is a fundamental requirement for trademark protection. The “UNO” mark, through the plaintiff’s consistent use and promotion, had acquired strong recognition as a source identifier.
  
• During the appellate process, defendant filed an invalidation request against the plaintiff’s trademark with the China National Intellectual Property Administration (CNIPA). However, CNIPA dismissed the request, affirming that “UNO” retained the necessary distinctive character to function as a trademark.
  
• The appeal lacked merit, and the trial court’s decision was affirmed in full.
  

Case Significance

This case highlights the key distinction between a generic term and a trademark.

• Generic names refer to common terms used to describe a category of products and are not protectable under trademark law.
  
• Trademarks, however, serve to identify a specific source of goods and must possess distinctiveness to qualify for legal protection.
  
• A trademark owner must actively maintain its distinctiveness through branding efforts and legal enforcement.
  

Legal Basis

Under Article 11 of the Chinese Trademark Law, the following cannot be registered as trademarks:

• Generic names, graphics, or model numbers of goods.
  
• Marks that directly describe the goods’ quality, materials, functions, usage, weight, or quantity.
  
• Any mark lacking distinctiveness.
  

However, if a mark acquires distinctiveness through use and market recognition, it may still be eligible for registration.

Under Article 9, Paragraph 1 of the Chinese Trademark Law, a trademark must possess distinctive character and be easily recognizable to fulfill its core function: distinguishing the source of goods or services.

Practical Takeaways for Businesses

To avoid a trademark being deemed generic, companies should:

• Invest in brand recognition through marketing and advertising.
  
• Monitor unauthorized uses of their trademarks and take timely legal action.
  
• Educate the public about their brand’s distinctiveness to maintain trademark protection.
  

In this case, the plaintiff successfully defended its trademark rights, reinforcing the importance of proactive trademark enforcement in protecting brand value.

Original article published at: Hainan Intellectual Property Court

Article by：Jingyi Luo, Manna Wang