"At present, the phenomenon of malicious trademark registration in the market has been repeatedly prohibited. The cost of trademark registration in China is relatively low, and the unique vocabulary in public resources, social hotspots, emergencies, celebrity names, other people's prior well-known brands and other signs usually have a high degree of public attention. At the briefing on the typical cases and special trial work of regulating malicious trademark registration held by the Beijing Intellectual Property Court a few days ago, Song Yushui, vice president of the Beijing Intellectual Property Court, said that effectively regulating the malicious registration of trademarks and fully protecting the legitimate rights and interests of legitimate trademark owners is an important aspect of creating a law-based business environment.
At the meeting, 10 typical cases of bad faith registration of various types of regulated trademarks were released. Among them, the "Kuaishou Lao Tie" trademark case was listed as a typical case for malicious cross-class preemptive registration of others' well-known trademarks in the online environment. The disputed trademark "Kuaishou Lao Tie" was applied for registration by a liquor sales company in 2017 and approved for use in Class 35 "accounting" services. The cited trademark was approved for registration by an information technology company in 2015 and approved for use in Class 41 "program production, entertainment" and other services. The Beijing Intellectual Property Court held that the evidence in the case could prove that the "Kuaishou and Tu" trademark of an information technology company had been used and publicized for a long time and widely before the filing date of the disputed trademark, and was widely known to the relevant public, constituting a well-known trademark used in services such as "program production and entertainment". The Disputed Trademark is the word "Kuaishou Lao Tie", which completely contains the distinctive identifying word "Kuaishou and Tu", and "Lao Tie" is also a trademark registered and used by an information technology company, so the Disputed Trademark constitutes a copy or imitation of "Kuaishou and Tu". Although there are differences between the "accounting" services approved for use by the Disputed Trademark and the services such as "program production and entertainment", it is considered that the services such as "program production and entertainment" are all services provided by the Kuaishou Platform for ordinary consumers. Among them, "program production" is mainly for the first producers in the platform, and "entertainment" services are mainly for ordinary audiences. In view of the fact that the registered users of the Kuaishou platform are as high as 700 million, which is almost a short ** platform with the participation of the whole people, the objects of its services must include the objects of "accounting" services, and the objects of the above services are overlapping. In addition, based on the huge traffic of the Kuaishou platform, entities engaged in "accounting" services may also promote through the platform, and there may be a connection between the two in terms of service content. Therefore, when the relevant public sees the Disputed Trademark used in the "accounting" service, it is easy to establish a considerable degree of connection with the "Kuaishou and Tu" trademarks, and mistakenly believe that it serves an information technology company or has a specific connection, weakening the distinctiveness of the well-known trademark and causing damage to the legitimate interests of the information technology company. In the end, the court ruled that "Kuaishou Lao Tie" was invalid, and the judgment has taken effect.
Zhou Liting, Director of the Trademark Committee of the Beijing Intellectual Property Court, said that when determining whether a trademark in the online environment constitutes a well-known trademark, it will fully consider the characteristics and speed of information dissemination in the mobile Internet environment, the establishment and scope of brand influence, etc., and comprehensively consider the various elements of the recognition of a well-known trademark. Where an actor maliciously cross-class preemptively registers a well-known trademark in the online environment of others, factors such as the degree of subjective malice of the actor and whether the audience of the relevant goods or services are highly overlapping will be fully considered to reasonably determine the scope of cross-class protection of the well-known trademark, and the regulation of malicious squatting will be strengthened.
Regarding how enterprises can effectively protect their own trademarks in operation, Liu Yijun, head of the trademark research team of the Beijing Intellectual Property Court, said that first of all, enterprises should establish a correct concept of trademark registration and apply for registered trademarks in a timely manner as needed. Trademark is the main manifestation of goodwill of an enterprise, and enterprises should apply for registered trademarks in a timely manner according to their actual production and operation needs, and reasonably determine the category of goods or services, so as to avoid the preemptive registration of trademarks that have been put into use by others. Second, enterprises should be cautious when acquiring trademarks and resist preemptively registering and hoarding trademarks. In practice, it has been found that some enterprises acquire trademarks by purchasing trademarks instead of applying for trademarks on their own, and once a lawsuit is involved, if the transferor is a malicious hoarder or a malicious squatter, then even if the trademark transferred by the enterprise is still at risk of being invalidated, it may be "a bamboo basket for nothing". Therefore, when an enterprise acquires a trademark, it should carefully examine whether the trademark has any defects in rights. Finally, enterprises should enhance their awareness of trademark use and standardize the retention of evidence of use. The essence of a trademark lies in its use, and enterprises should use the registered trademark in accordance with the specifications of the logo and the category of goods registered in the trademark, and avoid using the registered trademark in a non-approved category of goods or services in commercial use. At the same time, enterprises should standardize and retain evidence of the use of trademarks such as sales contracts, invoices, and advertisements, so as to protect their rights.
*: China ** Daily Author: Qian Yan.