Why the Acuvue of Johnson & Johnson Encounters Trademark Dilusion?

The State Food and Drug Administration of China (SFDA) recently released the news on its website that the colorful plain contact lens will be put into administrative supervision over medical equipment (the “News”). Though the equipment is referred as the “colorful plain contact lens”, while it’s reported by media in the name of “Acuvue/Acuvue” (the “Acuvue”, means beautiful sight in Chinese). Afterwards, Johnson & Johnson (NYSE: JNJ), the manufacturer of “Acuvue”, stated that the words are the exclusive trademark of it, and only the contact lens with cosmetic effect could be called as “Acuvue”.

It’s a typical case of trademark dilusion, for that it has been taken by the consumer that the “Acuvue” has replaced the terms of the “colorful plain contact lens” to be the name of a specific product, which is surely the last thing the manufacturer would like to see. For the trademark dilusion, Mr. You Yunting of Bridge IP Law Commentary was interviewed by China Industry and Commerce News, and the details are as follows:

I. When could appear the trademark dilusion?

The most common 2 main situations for the trademark dilusion is 1) to use the same or similar characters, image or its combination to a well-known trademark on other difference or dissimilar products or services, which reduces or impairs the distinctiveness and distinction of the mark; 2) the trademark to be a generic name like that in the incidence, which may result in the public misunderstanding on well-known or better known marks to be the generic names of a product.

The dilusion of the first situation is caused by other’s maliciousness for the trademark free riding and confusion among consumers. Therefore, it’s regulated in China Trade Mark Law that the well-known trademark may enjoy the protection over classes for the prevention of mark dilusion.

As to the second situation mentioned above, it’s mainly due to the company’s improper strategy of trademark, over-propaganda or the monopoly of the product. Actually, the genericization of the trademark is not rare for it mainly comes from the singularity of the product which has little competition and most market share. And that’s quite common in the monopolized industry, like the drug of aspirin or the chemical product of Freon.

For the “Acuvue” case, for the phrase means to beautify the sight in Chinese, which reflects the feature of the product and is deficient in its distinction. Meanwhile, for it repeatedly shows up in ads of “Johnson & Johnson’s Acuvue”, the consumer is likely to mistake the product’s name as “Acuvue” which marked as “Johnson & Johnson”. For these reasons, the consumer could mistake “Acuvue” as the product’s name rather than the registered mark of Johnson & Johnson.

The case implies us that to add the name of industry name, raw material or the name reflecting the feature of the mark into the product name may boost the reputation of a product in a short time, while it may bring the sequel of the trademark dilusion. For that’s the two blades of the sword and rarely could be settled both.

II. The measure against the dilusion

For the trademark dilusion of the 1^st situation, the owner of the well-known trademark could choose to file the lawsuit against the infringement.

For the 2^nd mentioned dilusion above, the company shall make proper brand strategy with the consideration with more elements as better; meanwhile, it shall highlight the difference between the product name and the trademark. To prevent the dilusion, the specification on the trademark and product name is suggested, like Intel and Panasonic are both marked by its company in their ads that it’s the brand of the company rather the name of the product.

Author: Mr. Luo Yanjie
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.

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