Trademark is an important intellectual property, which will be protected by law after being registered in the relevant government departments, and then it will become a registered trademark which can guard against infringement by others.
However, preemptive trademark registration has happened frequently in our daily life, for some people attempt to cash in on the popularity of celebrities.
Relevant Cases
01
Recently, a short video blogger named Classmate Zhang has become popular online for sharing his daily life in rural areas.
Classmate Zhang started to post videos on Tik Tok in October this year, and he gained more than ten million fans in less than two month. His success results from his hard work and his high quality content.
However, as Classmate Zhang becomes famous, he attracts the attention of people with ulterior motives, and some applicants who have no relationship with Classmate Zhang have begun to register the trademark “Classmate Zhang” since December this year.
source: cnipa.gov.cn
Enlightenment
In order to safeguard the lawful rights and interests, the public should establish the concept of trademarks and enhance the awareness of rights protection. It is also necessary to register trademarks for themselves in time, so that they can prevent others from preemptive trademark registration.
02
On August 5 this year, the 14-year-old Chinese diver Quan Hongchan won the Olympic gold medal in women's 10-meter platform final. After that, Quan Hongchan became a household name in China, and Chinese people congratulated and praised her.
However, there were still some people who only paid attention to the huge commercial value behind Quan Hongchan and ignored the law, and they started to register the trademark "Quan Hongchan" before getting authorization from the athlete herself or her guardian.
source: cnipa.gov.cn
Attention
The behavior of using the names of Olympic players maliciously to apply for trademarks will have bad influence on our society. This type of behavior not only infringes the athletes’ right to personal name and honor, but also harms the athletes’ legitimate interests seriously.
On August 15 this year, China National Intellectual Property Administration made a relevant announcement and rejected applications for trademark registration using names of Olympic athletes, which meant China would protect the name rights of public figures.
When it comes to the behavior of preemptive trademark registration, many businesses put fluky psychology. They want to make profits with the help of celebrities’ reputation, and think that there will be no loss even if the trademark registration fails. But such behavior has broken the law and should be severely cracked down.
03
On May 27 this year, the American TV serials Friends broadcast a special episode on the internet, in which the original cast members reunited 20 years later. The fans of Friends were excited and the reputation of Friends began to spread. Meanwhile, there came out a lot of applications for the trademark “Friends”.
source: cnipa.gov.cn
Notice
As a big IP in TV series, Friends truly has a certain influence. Therefore, the application for the trademark "Friends" needs to go through a strict process. Fortunately, these companies that attempted to apply for the trademark "Friends" failed at last.
Similar behaviors of preemptive trademark registration still occur frequently. Malicious trademark registration is extremely harmful, which has a bad impact on the market order, and damages the operators' rights to use the trademark.
China attaches great importance to IPR protection. In order to further strengthen crackdown on malicious trademark registration, China National Intellectual Property Administration has decided to carry out a special campaign against malicious trademark registration since March 2021.
The special campaign focuses on cracking down on the following behaviors.
1.profiteering
2.malicious trademark registration
3.behaviors that will cause some negative social impacts
4.behaviors that will disrupt the order of trademark registration management
By cracking down on these bad behaviors, China National Intellectual Property Administration is aimed at guiding the whole society to establish a correct awareness of trademark registration and creating a good business environment.
What should you do
if your trademark is registered by others?
01
You can raise an opposition to the trademark that has not been approved for registration.
According to China’s trademark law, the trademark will be published for opposition after it is reviewed by the Trademark Office, which means that the three-month publicity period starts.
If you find other parties have pre-emptively filed your trademark, you can raise an opposition under Articles 32 of the Trademark Law during the three-month publicity period, for they infringe your prior rights to use the trademark.You need to provide relevant evidence that you used the trademark first and the trademark had obtained "a certain influence" through your own use.
Besides, don’t forget to file a trademark application with the trademark Office in your own name.
02
You can raise an invalidation action to the registered trademark.
According to Articles 45 of the Trademark Law, within five years from the date of trademark registration, people with prior rights to use the trademark or the interested person can raise an invalidation action to the registered trademark. For malicious trademark registration, the owner of a well-known trademark shall not be limited by the five-year period for invalidation after registration.
In the process of raising an invalidation, it is also suggested that people and enterprises whose trademarks have been registered by others should file an application for trademark registration at the same time. And they are supposed to prepare sufficient evidence to prove the prior use of the trademark, so as to successfully obtain their own trademark later.
03
You can focus on brand and trademark protection.
In China, trademark registration is divided into 45 classes, and the registered trademarks are only protected in the classes they belong to.
Therefore, when enterprises or individuals register trademarks, they should consider the long-term development of enterprises and the possible changes in personal needs. In order to ensure that their own trademarks can be fully protected, registering trademarks in relevant classes is wise.
As intangible assets of enterprises, trademarks play an important role in constructing enterprises’ brand images. In fact, the trademark registration can not be ignored if enterprises want to protect their brands. Enterprises should register trademarks in time, and it is beneficial to register trademarks under multiple classes. At the same time, if necessary, enterprises can also register trademarks in other countries, so that they can avoid the risk of preemptive trademark registration.
In the fierce market competition, trademark registration attracts a great deal of attention.
The public should improve their awareness of trademarks, and they can protect their rights according to relevant laws when handling the cases of preemptive trademark registration or trademark infringement. Market operators should register their trademarks according to the law.
HACOS provides customers with intellectual property services.
Pease free to contact us if you have any questions about intellectual property protection.
