Malicious squatting “Ice Dun dun” “Gu Ailing” invalid!How can trademark registration be legal?

On February 14, the State Intellectual Property Office issued a notice rejecting 429 trademark registration applications, including no. 41128524 “Bing Dwen Dwen” and No. 62453532 “Gu Ailing”.The registered no. 41126916 “Xue Dun Dun”, No. 38770198 “Gu Ailing” and other 43 trademarks were declared invalid according to the authority.Over a period of time, the phenomenon of trademark squatting such hot words as Olympic mascots and athletes names has occurred from time to time.Previously, “Gu Ailing” and “Bing Dwen Dwen” trademarks were registered.According to a survey, more than 170 trademark applications have been filed for “Bing Dwen Dwen” and more than 90 for “Xue Rong Rong”.”Gu Ailing” trademark application information has 29.Among them, 11 trademarks of “Gu Ailing” applied by a natural person in June 2019 have been registered. The international classification covers education and entertainment, advertising sales, cloth and bed linen, etc.During the Tokyo Olympic Games in 2021, individual enterprises and natural persons have put “Chen Dream” “Quan Hong Chan” and other Olympic athletes names and relevant specific meaning of the hot words malicious squatting.The State Intellectual Property Office issued a notice concerning the rejection of 109 trademark registration applications such as “Yang Qian”, “Chen Meng” and “Quan Hong Chan”, and 109 relevant trademark registration applications were rejected according to law.What principles should be followed for trademark registration issued by state Intellectual Property Administration in 2021?What can’t be registered as a trademark?How to look at the phenomenon of trademark alongside the Olympic hot spot?How to protect their rights after being “targeted” by registered trademarks?Huang Qiuping, judge of the Fourth court of the People’s Court of Xicheng District, Beijing, explains the relevant issues.Q: What principles should trademark registration follow?Qiuping Huang: Article 7, Paragraph 1 of the Trademark Law stipulates that the application for registration and use of trademarks shall follow the principle of good faith.The trademark law of our country implements the trademark registration system, and the applicant applies for registration to obtain the exclusive right to use the trademark.The applicant shall abide by the principle of good faith in applying for registration and using a trademark.In addition, trademark application examination follows the principle of application first, voluntary registration and so on.What is the specific flow that asks trademark registration?Qiu-ping huang: by the applicant for trademark registration according to the prescribed classification of goods is allowed to use the trademark goods categories and name of commodity, apply for registration to the state intellectual property office of the trademark office, state intellectual property office of the trademark in the nine months from the date of receiving the application documents review, in conformity with the law, shall be preliminary approval notice;Those that do not conform to legal provisions shall be rejected.Where a trademark has been preliminarily examined and published, the prior right holder or interested party may, within three months from the date of publication, file an objection with the Trademark Office.Where no objection is raised at the expiration of the period of public announcement, the registration shall be approved, a certificate of trademark registration shall be issued, and the trademark shall be published.The trademark registration certificate shall contain the trademark (drawing), the trademark number, the category of goods approved for use, the name and address of the applicant and the validity period of registration, etc.What can’t be registered as a trademark?Huang Qiuping: The Trademark Law clearly stipulates the marks that cannot be registered as trademarks, mainly including those that involve public interests and lack distinctive features:The first case mainly includes the same as or similar to the national name, national flag (flag), national emblem (emblem), national anthem, “Red Cross”, “red Crescent” and other symbols of China, foreign countries or intergovernmental international organizations;Marks that are identical with the names and graphics of the central state organs, the names of specific locations, landmark buildings, etc.;Those that are discriminatory against any nationality or are deceitful so as to easily cause the public to misunderstand the quality or other characteristics of a commodity or the place of origin, or those that are harmful to socialist morals and customs or have other adverse effects.The second case mainly include the lack of significant features of generic names of commodity, graphics, symbols, only directly said the quality of the goods, the main raw material, function, quantity, weight, and other characteristics, as well as the 3 d logo by any shape of the goods itself, required for technical effect and the shape of the shape or make the goods substantive value.Of course, in the second case, the listed two-dimensional marks can be registered as trademarks if they have obtained significant features through use and are easy to identify.Is it illegal to ask for the names of public figures?What are the responsibilities?Huang Qiuping: According to the Trademark law of China, applying for trademark registration shall not damage the existing prior rights of others, nor shall it be preempt by unfair means to register a trademark that has already been used by others and has certain influence.Applying for trademark registration of the name of a public figure is an act that damages the existing prior rights of others.The act itself contains “bad faith”, which is not only contrary to the principle of good faith, but also inconsistent with the principle of protecting prior rights in intellectual property law.In addition to facing the result of trademark being declared invalid, the applicant may also be liable for civil damages based on the subsequent use behavior and malicious litigation behavior.The agency will be listed in the trust-breaking list by the State Intellectual Property Office, or ordered to correct within a time limit by the administrative department of industry and commerce, and given a warning, a fine or other administrative punishment. If a crime is constituted, the agency may need to bear criminal responsibility.What does the rejection of the trademark of “Bing Dwen Dwen” and “Xue Rong Rong” show?Mr. Wong: It’s no surprise that the “Bing Dwen Dwen” and “Xue Rong Rong” trademarks were rejected.No individual or unit may register the name and graphics of Bing Dwen Dwen and Xue Rong Rong as trademarks without the consent of the copyright owner.Relevant provisions are made in the Trademark Law and the Provisions of the Supreme People’s Court on Several Issues concerning the Hearing of Administrative Cases concerning Trademark Authorization and Confirmation.If the appearance of Bing Dwen dwen and Xue Rong Rong is registered as a trademark without copyright, it is an infringement of others’ prior copyright.If the application for registration is not appearance, but Chinese name or English name, based on the Beijing Olympics “top flow”, the mascot of brand value and popularity it goes without saying that their names are not inherent words in Chinese or English, significantly stronger, will be registered to use, it will inevitably misleading the public.Therefore, the application for the trademark of “Bing Dwen Dwen” and “Xue Rong Rong” infringes the prior commercial rights and interests of others.Ask how to judge the act of malicious trademark registration?Huang Qiuping: There is no clear law on the factors that should be considered for malicious registration.In the trial of trademark civil dispute cases, the court will not examine the bad faith of trademark registration in principle, because whether there is bad faith in trademark registration is within the scope of trademark administrative case examination, and the court only has the right to determine whether there is infringement of the right to exclusive use of existing trademarks in civil cases.However, when it comes to the litigation between the prior right holder and the trademark right holder, in order to maintain the market order of integrity, reflect the socialist core values and adhere to the principle of protecting the prior right, it is necessary to determine the subjective intention of registration and further determine whether the malicious registration subject abuses its rights.Ask if the name of a public figure is (malicious) squatting, how to protect their rights?Huang Qiuping: Different departments are responsible for trademark registration and use in China.The State Intellectual Property Office shall exercise its functions and powers in trademark approval and registration, and examination and verification of objections. If a person refuses to accept the administrative act of the State Intellectual Property Office, he/she may file an administrative lawsuit over trademarks.When the court tries such cases, it mainly examines whether the specific administrative acts of the State Intellectual Property Office are legal on the question of “whether the trademark should be registered, invalid or revoked”.However, when the trademark exclusive right holder is infringed on the trademark right by others, the lawsuit should be a trademark civil lawsuit. In this kind of case, the court mainly deals with the problems of infringement and compensation.Therefore, if the name of a public figure is registered, such as the prior rights and interests of trademark registration violations.Generally speaking, the way of safeguarding rights mainly includes administrative relief and judicial relief.Where the name of a public figure is maliciously registered, and the public figure becomes the prior right holder, he or his interested party may request the Trademark Review and Adjudication Board to declare the registered trademark invalid.Although the administrative remedy way needs to go through trademark invalidation examination, trademark Review and Adjudication Board review, trademark administrative lawsuit first instance, second instance, the cycle is long, but this is the most effective remedy means.The judicial remedy is to direct against the use of maliciously registered trademark to bring an unfair competition lawsuit and demand compensation for losses.This way of safeguarding rights can form a deterrent to the use of behavior, timely safeguard the rights of the prior right holder, but if the maliciously registered trademark has not been used, it can not only file a civil lawsuit against the registration.It is still necessary to apply for invalidation of maliciously registered trademarks through further administrative procedures.In short, the overall planning and selection should be made according to the actual situation of the event.How can people with the same name as public figures protect their rights?Huang Qiuping: The right of name is a personal right granted to natural persons by Article 110 of the Civil Code. There are no clear provisions in the law on the protection of the name right of the subject with the same name in the field of trademark registration.It should be noted that the role of the trademark is to identify the goods from a specific subject.Generally speaking, when the public sees the trademark of a natural person’s name, it naturally associates the trademark with the natural person.Therefore, this provision does not protect all natural person names.If the litigant claims that the application for trademark registration damages its prior right of name, it shall generally provide evidence to prove that the litigant trademark applicant has knowingly applied for trademark registration by means of embezzlement or false use of its name.Therefore, on the one hand, it is necessary to prove the malicious intent of the applicant;On the other hand, the name has a certain degree of visibility, with the possibility of identifying the source of specific goods or services.Otherwise, name rights may not be protected in the field of trademark law.Ask how to govern trademark rub hot spot alongside celebrity phenomenon?Qiu-ping huang:In the form of the 2019 revision of the trademark law, and emphasizes to use for the purpose of malicious trademark registration, shall be rejected and will be “for the purpose of using” as the starting point of registration, the compensation of malicious use after invalid action at the same time, agency administrative penalty provisions, the trademark registration subjective intention, the intention of using as the focus of the review,We will resolutely curb the practice of squatting.The Guidance for trademark Examination and Trial issued by the State Intellectual Property Office clearly stipulates the cases of “malicious trademark registration not for the purpose of use”, including: the number of trademark registration applications is huge, obviously beyond the needs of normal business activities, lack of real intention of use, and disrupt the order of trademark registration;A large number of applications for registration of the same or similar to the public cultural resources such as the name of well-known figures, well-known works or role names, and other well-known and recognizable works of art.It can be said that a strict grasp of trademark applications suspected of malicious registration is conducive to a powerful attack on malicious registration from the source.In the field of trademark civil disputes, judicial authorities are also increasing the punishment of malicious trademark registration and use.Malicious squatting, hoarding trademarks, is a serious interference to the market order.This kind of behavior seriously violates the principle of honesty and credit, and only obtains temporary illegal interests, which will be severely punished by the law.Hope operators understand, compared with racking their brains rub heat, “alongside celebrities”, good faith management, is the right way.Source: Rule of Law Daily

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