Windows TM Infringement?

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Brad posted on this case a while ago, and I’m just getting around to looking at it. Here are the facts:

China Trademark and Patent Office (CTPO) dealt another blow to American software giant Microsoft in January 2008. Reportedly (here and here), it rejected Microsoft’s opposition of the registration of a trademark “Windows”by a Ningbo eye glass company. The company successfully registered “??” (“Shi Chuang”, which means windows of vision) in 2001, and it later tried to register “Windows” in 2003 for glasses (Class Nine).

Brad speculates as to the reason behind the decision:

Without further facts or the CTPO written decision, I can only assume what went wrong on the part of Microsoft. Two possible scenarios exist here that might have led to Microsoft’s misstep in protecting “Windows” in China. First, Microsoft simply forgot to register “Windows” in China, which is unlikely given its level of legal sophistication. Second, it registered “Windows” in China but did not cover Class Nine, limiting its rights to the classes of goods or services registered for.

OK, I’m going off of little in the way of facts here as well, but here is my opinion. First, Brad is correct that Microsoft would not have forgotten to register at all — the days of that happening for a multinational like Microsoft are long gone, even for Chinese language marks. Second, Class Nine is of particular importance here because it not only includes eyeglasses, but also computers — again, I have no doubt that Microsoft is well covered in Class Nine.

So let’s assume that whatever registration is possible has already been done. You then have to ask what exactly is possible, and what isn’t. Microsoft has many trademarks that it owns, but for Windows, there are two major possibilities: the word mark "Windows" and the Windows logo. Given that the Windows logo is quite distinctive, and it definitely qualifies as a world-famous trademark, I can’t imagine that Microsoft would have any trouble with an opposition against anyone in Class Nine (or in any other class) with respect to that logo. It could also assert an effective copyright action with that logo as well, by the way.

No, I think we are dealing with the word mark here, and therein lies the thorny problem for a product name like "Windows" — it’s a generic term. A basic principle of trademark law is that to be protected, a mark must be distinctive. After all, the purpose behind a trademark is to let the public know that the goods/services in question have been produced by a specific enterprise or individual.

A generic term sometimes runs into protection problems. Consider when the "infringer" is selling related goods. For example, if a software company that produced anti-virus applications used the product name "Windows," one might naturally assume that this was a Microsoft product — you might end up with a fairly strong unfair competition case, for example. However, if a company that manufactured coat hangers used the "Windows" product name, most consumers would not automatically assume that Microsoft was involved, and therefore that kind of use would be difficult to stop.

The latter is what I think is going on with this case. The company in question sells eyeglasses, and one can see why using the word "Windows" would be attractive for them. No problem there.

That being said, Microsoft would still have several possible arguments that it could try, depending on the facts of the case. Let’s hope that Brad can dig up some additional info on this. I am curious to see what specific theory was attempted.