Recently, the Trademark Office of the State Intellectual Property Administration (hereinafter referred to as the "Trademark Office") issued a message saying that in order to crack down on malicious trademark registration applications related to the epidemic in accordance with the law and increase the control of trademark registration applications related to the epidemic and prone to adverse effects, the Trademark Office has formulated the "Guiding Opinions on Trademark Review Related to Epidemic Prevention and Control", and implemented control of nearly 1,000 trademark registration applications related to the new crown pneumonia epidemic, including "Huoshenshan" and "Leishhenshan". On March 4, the Trademark Office applied Article 10, Paragraph 1, item (8) of the Trademark Law of the People's Republic of China (hereinafter referred to as " Trademark Law ") to the first batch of 63 malicious trademark registration applications that have entered the substantive review stage and are related to the epidemic, and made a decision to reject it in accordance with the law.
Since then, the public applauded the government's firm determination to maintain the clean and upright field of intellectual property rights. So, behind the "rejection", what are the legal and moral bottom lines that trademark applicants and trademark agencies should follow? What is the boundary between trademark application and malicious registration? What stricter restrictions does the newly revised Trademark Law impose on malicious trademark registration? With these questions in mind, the reporter conducted in-depth interviews.
"Offside" under morality
2020's start has changed many people's lives. A sudden outbreak of epidemic has had a huge impact on the whole world, country, society and everyone. "Coronavirus", "City Lockdown", "quarantine", "Mask", "Leodian Mountain", "Huoshen Mountain" and "Zhong Nan Mountain" have become the "keywords" of this spring. However, at the critical moment of fighting the epidemic, some "smart" companies or individuals "smart" have "sharp" found "business opportunities" and have taken the wrong idea of using "Huoshenshan" and "Leishshan" to apply for trademark registration using "keywords" related to the epidemic.
According to media reports, Tianjin Wanhui Wine Industry Group Co., Ltd. applied for the word "City Blockade" as a trademark in multiple trademark registration fields in one go, preparing to be used for alcohol, beer and advertising marketing; Fujian Xiamen Taixingmei Technology Co., Ltd. applied for the "New Coronavirus Fuxing" trademark in three trademark fields: advertising and marketing, medicines and medical devices; Zhongfei Food Co., Ltd. has applied for more than 30 trademarks in multiple trademark fields, including "New Coronavirus Good Tea", "Anti-Crown Prevention", "New Coronavirus Clear", "New Coronavirus" and "Qingguan Good Tea", etc. In addition to these trademark applications with the words "new crown" and "city lockdown", some people have even begun to register the trademarks of "Huoshenshan" and "Leishenshan".
The 63 trademark registration applications rejected by the National Intellectual Property Office in accordance with the law include 27 trademark registration applications such as "Huoshenshan", 24 "Leishhenshan", 3 "Zhongnanshan", and 3 "Fangka". It involves 41 applicants and a total of 23 product and service categories.
Since the outbreak of the epidemic, all parties in the country have invested huge human, material, financial resources and other resources and extraordinary contributions, and built hospitals such as Huoshenshan and Leishenshan in a short period of time. Thousands of builders risked getting infected with the virus and fought day and night. After taking over the hospital, medical staff moved forward fearlessly and made every effort to treat the patients. At the same time, a large amount of donations and love flocked to these hospitals, and the social attention was also focused on this. Words such as "Huoshenshan" and "Leishenshan" have already carried the feelings of unity among all walks of life, facing difficulties, and resolutely fighting the "epidemic".
National Intellectual Property Office stated that Huoshenshan Hospital and Leishenshan Hospital are the name of Wuhan's frontline hospital for fighting the epidemic. It is the focus of public opinion throughout the society during the epidemic prevention and control period, and is one of the important signs of the people of the whole country uniting and fighting the epidemic. Other applicants outside Huoshenshan Hospital and Leishenshan Hospital register it as trademarks, which is likely to cause major adverse social impacts and should be rejected according to law; Zhong Nanshan is a Chinese worker Academician Cheng, a famous respiratory expert, an advanced figure in the fight against SARS in 2003, and a leader of the high-level expert group of the National Health Commission, the applicant applied for registration as a trademark without Zhong Nanshan's authorization, which could easily cause major social adverse effects and should be rejected according to law. Similarly, after the outbreak of the new crown pneumonia epidemic, with media reports, "field cabin" hospitals have also become a well-known term for the public. "field cabin" application for registration as a trademark can easily cause major social adverse effects and should be rejected according to law.
legal limit for trademark registration
trademark, which is what consumers often call "brand" in their daily lives. When consumers recognize a certain product, their brand will generate value. Therefore, as an intangible asset, trademarks are of great significance to shaping the image of the enterprise.
With the development of the market economy and the improvement of public intellectual property awareness in society, registered trademarks have become a consensus among enterprises. So, is there a legal bottom line for trademark registration?
Article 10 of my country's Trademark Law stipulates several situations that may not be used as a trademark. Among them, Article 10, Paragraph 1, Paragraph (8) clearly stipulates that "those that are harmful to socialist morality or have other adverse effects" shall not be used as trademarks. " Provisions of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases of Trademark Authorization and Rights Confirmation " clearly stipulates that if a trademark logo or its constituent elements may have a negative or negative impact on the public interests and public order in our society, the people's court may determine that it belongs to the "other adverse effects" stipulated in the Trademark Law.
In various types of trademark registration, recognizable names are also one of the choices. Xu Chuanhan, assistant judge of the Asian Games Village Court of Chaoyang District People's Court in Beijing, said that the "name" includes formal names and stage names and pseudonyms registered in the household registration book. Two conditions should be met when protecting the commercial use of names: one is that a specific name should have a certain degree of popularity, be known to the relevant public, and be used to refer to the natural person; the other is that a specific name should have a stable correspondence with the natural person.
Xu Chuanhan introduced that in the field of public figures, he or she can indeed register his or her name as a trademark after authorization. For example, Li Ning Sports (Shanghai) Co., Ltd., which is the legal representative of Li Ning , registered the "Li Ning" trademark on many categories of goods; Dong Mingzhu is the legal representative of Zhuhai Gree Electric Co., Ltd., which is the legal representative of Zhuhai Gree Electric Co., Ltd., which is the legal representative of , registered "Dong Mingzhu" and "Dong Mingzhu's store" as trademarks; Lin Chiling also registered her name as trademarks.
"The right to name belongs to the right of personality, but it also contains economic interests, and the names of celebrities are particularly prominent. The names of public figures are closely linked to the commercial value of public figures themselves, and the public is very likely to associate products with the public figure." Xu Chuanhan said, "If the names of public figures can be registered as trademarks at will, it is easy to lead to 'free riding' behavior and disrupt the normal order of the market. Since different public figures also There are differences in audience scope and popularity, and trademark review is subjective to a certain extent. In judicial practice, celebrities who have passed away generally consider from the level of adverse effects; for living celebrities, if the name right holder is not the first to register a trademark, the name right holder can raise objections and be invalid according to law. "
According to reports, whether a trademark can be registered under the name of a public figure needs to be made in light of the actual situation. For example, Zhong Nanshan’s name has high recognition at specific time nodes and social environments, and is within the scope of prohibited registration.According to Article 8 of the Trademark Law, any sign that can distinguish the goods of a natural person, legal person or other organization from the goods of others, including words, graphics, letters, numbers, three-dimensional logos, color combinations and sounds, and combinations of the above elements, can be applied for registration as a trademark. "A common person's name can be registered as a trademark as a type of 'text'. However, if the name belongs to the logo that cannot be registered as a trademark stipulated in the Trademark Law, it is necessary to specifically review whether it violates the prohibited clause as a whole." Xu Chuanhan said.
Strengthening agency supervision is urgently needed
Trademark agency, as a third party that specializes in providing professional services such as trademark consultation, agency, and evaluation for enterprises or individuals, is an important part of social legal intermediary work and a bridge and link between relevant state organs and enterprises and individuals. Recently, some trademark agencies have been entrusted by the applicant to apply for trademarks registered for trademarks related to the prevention and control of the new crown pneumonia epidemic and are prone to adverse social impacts, which has aroused widespread attention from the society.
According to media reports, from February 3 to February 13, 2020, Beijing Yijie Shunda International Intellectual Property Agency Co., Ltd. was commissioned by Guangdong Guangzhou Yizi Beauty and Hairdressing Products Co., Ltd. and Lawns Building Materials Industrial Hubei Co., Ltd. to apply for a total of 10 trademarks with the names "Leishen Mountain" and "Huoshenshan" from the State Intellectual Property Office. The agency was fined up to 100,000 yuan for malicious application to register the trademarks of "Huoshenshan" and "Leishenshan". It is understood that this case is the "first case in the country" to crack down on the application for malicious trademark registration.
Beijing Chaoyang District Market Supervision Bureau pointed out that the above two companies apply for registration of "Huoshenshan" and "Leishhenshan" as trademarks, which damages the prior rights of Huoshenshan Hospital and Leishenshan Hospital, which is prone to cause major adverse social impacts, and violates Article 32 of the Trademark Law, that is, "Applying for trademark registration shall not damage the existing prior rights of others, nor shall they register trademarks that others have used and have a certain impact by improper means." During the epidemic prevention and control period, the agency knows or should know the above situation, but still accepts the agency registration application from the two applicants, which violates the provisions of Article 19, Paragraph 3 of the Trademark Law, that is, "If the trademark agency knows or should know that the trademark applied for registration by the client is in the circumstances stipulated in Articles 4, 15 and 32 of this Law, it shall not accept its entrustment", which constitutes an act of malicious trademark registration application. According to Article 68, Paragraph 1, Item (3) of the Trademark Law, the Chaoyang District Market Supervision Bureau of Beijing ordered the parties to immediately stop the illegal acts and make an administrative penalty decision to give him a warning and impose a fine of 100,000 yuan.
is unique. Recently, 9 patent trademark agencies including Motang Trademark Firm (Guangzhou) Co., Ltd., were suspected of illegal trademark applications and were investigated for suspected illegality. According to the relevant person in charge of the Guangzhou Market Supervision and Administration Bureau, the phenomenon of "abnormal application" is a "stubborn disease" in the rectification of the patent and trademark agency industries. During the epidemic, some bad companies applied for registration of trademarks such as "Huoshenshan" and "Leishhenshan" not only harmed the public's interests, but also easily caused major adverse social impacts.
htmlOn March 6, the China Trademark Association issued the "Initiative on Further Strengthening Self-Discipline in the Trademark Agency Industry" (hereinafter referred to as the "Initiative"). The Initiative pointed out: "National trademark agency agencies should further engage in trademark agency work in accordance with the requirements of the national trademark laws and regulations and the relevant requirements of the China Trademark Association Industry Self-Discipline Convention, and resolutely oppose malicious trademark registration application. Industry self-discipline is to require trademark agencies to always reflect on themselves under any circumstances, consciously abide by professional ethics, uphold ethics and responsibilities, and oppose all illegal and irregular behaviors."
In order to strengthen the supervision of the trademark agency industry, the State Intellectual Property Office recently issued the "Notice on Severely Cracking down on Illegal Trademark Application Agency Acts Related to the New Coronavirus Pneumonia Epidemic", and deployed special rectification actions.Specific measures include: Continuously increase the monitoring and investigation of agents and abnormal trademark application behaviors related to epidemic prevention and control, and promptly forward them to investigate and deal with them. The intellectual property offices of each province (autonomous region, municipality) will immediately organize an investigation based on clues of the act of agents for abnormal trademark application transferred by the State Intellectual Property Office and order them to immediately rectify the wrong behavior; for those who have committed illegal and irregular behavior, they will be reported to the State Intellectual Property Office for stopping their trademark agency business in accordance with the law; for those who violate the Criminal Law of the People's Republic of China and other relevant laws, they will be promptly transferred to relevant departments for handling.各省（区、市）知识产权局要指导当地相关行业协会加强行业自律，强化业内自律监督，对存在严重违法违规行为的会员单位及时予以惩戒，对非会员单位依法依职责予以通报曝光、公开谴责。此外，各省（区、市）知识产权局要加快建立健全商标代理信用记录档案，将严重违法违规等行为记入代理机构和个人档案，及时报送国家知识产权局并向社会公布，并依照规定与相关部门开展联合惩戒等。
依法打击恶意商标注册行为
近年来，随着商标注册程序优化、注册周期缩短、注册成本降低，当事人获得商标注册更为便捷。同时，也出现了以“傍名牌”为目的的恶意申请和以转让牟利为目的的大量囤积商标等问题，严重扰乱了市场经济秩序和商标管理秩序，破坏了营商环境。
最高人民法院于2019年上半年发布的《知识产权案件年度报告（2018）》显示，最高人民法院2018年审理的专利和商标案件增长幅度较大，分别同比增长103.6%和80%。 According to media reports, there are many cases of malicious trademark registration.
为有效规制恶意申请和囤积注册商标行为，加强对商标专用权的保护，2019年4月23日，全国人大常委会第十次会议决定对《商标法》进行修改，共涉及6个条文。其中，为了进一步加重侵权成本，惩罚恶意侵权人，此次修改比照《中华人民共和国专利法修正案（草案）》相关规定，将恶意侵犯商标专用权的侵权赔偿数额计算倍数由一倍以上三倍以下提高到一倍以上五倍以下，并将商标侵权法定赔偿数额上限从300万元提高到500万元。
"Application for trademark registration that does not use for the purpose of use shall be rejected." In this amendment to the Trademark Law, the above provisions are impressive. Some experts said that such applicants do not have the idea or intention to use the trademark, but intend to transfer the trademark at a high price for the purpose of trademark transactions and transfers to make profits.商标注册和保护的主要目的是鼓励企业在品牌建设上进行投资，为社会提供质量稳定、可靠的商品和服务，保障其能够从这些投资中获得相应回报。 The establishment and operation of these systems requires a lot of cost. And these costs come from public funds. If the trademark is registered but not used, the investment of these public funds will lose its meaning.
In recent years, malicious registration and trademark hoarding have been one of the key targets of my country's trademark registration field. The relevant judicial precedents also clearly define the boundaries between reasonable and unjust.
以广东省佛山市顺德区贝贝健电子科技有限公司（以下简称“贝贝健公司”）诉国家知识产权局行政纠纷案为例，该公司提交的第35类“鲜多鲜”商标申请被国家知识产权局驳回，理由是其没有以使用为目的，且无合理理由囤积商标。 To this end, the company sued the State Intellectual Property Office to court.
According to the relevant provisions of the Trademark Law, the application for trademark registration should have the real intention of using it, with the purpose of meeting your own trademark use needs. In other words, the act of applying for a registered trademark should be reasonable or legitimate.
After trial, the Beijing Intellectual Property Court rejected Beibeijian's lawsuit and pointed out in the first instance that in addition to the trademarks involved in the case, Beibeijian has applied for registration of more than 160 trademarks in multiple categories. Specifically, it includes "SK" and "Iron Marbled" and so on, which are the same or similar to well-known brands and well-known movies. Therefore, Beibeijian Company did not use the purpose of use, and there was no reasonable reason to apply for registration and hoard trademarks, which seriously disrupted the trademark registration order and improperly occupied social public resources.
In recent years, my country has vigorously promoted and improved the intellectual property protection legal system in order to optimize the business environment, encourage and protect innovation. In addition to the amendment of the Trademark Law, the revision of the Patent Law of the People's Republic of China has entered a substantive stage. In addition, the "Opinions on Strengthening Intellectual Property Protection" issued by the General Office of the CPC Central Committee and the General Office of the State Council in November 2019 clearly pointed out that it is necessary to increase the intensity of punishment for infringement and counterfeiting, strictly standardize evidence standards, strengthen case execution measures, and improve the protection system for new business forms and new fields. The "New Progress Report on the Protection and Business Environment of China's Intellectual Property Rights (2018)" released in May 2019 also listed "increasing the penalties for infringement" as the first of the overall development trend of China's intellectual property legal system. With a firm stance and clear attitude of strictly protecting intellectual property rights in accordance with the law, China's intellectual property protection system and measures are becoming increasingly perfect and stride forward.
Source: April 17, 2020 China Trial
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