The company that sells urns preemptively registers more than 100 trademarks and makes profits by complaining

The State Intellectual Property Office and the courts take action to curb extortion and profit-making

　　Legal Network Trainee Reporter Wang Jing

　　Hundreds of sex toy online stores have been complained of trademark infringements due to the use of the term "self-defense" in the description of the products in the online store.

The complainant is a company whose business scope has nothing to do with sex toys and sells urns.

　　This company has applied for the registration of more than 100 product description vocabulary commonly used by big foreign brands such as "DIESEL" and sex toy stores such as "self-defense", and threatened to withdraw the complaint from the online store, and give it five thousand, and only free Use until the end of the year".

　　Recently, the State Intellectual Property Office made a ruling, determined that this company maliciously registered trademarks, disrupted the normal order of trademark registration and management, undermined the market order of fair competition, and declared the "self-defense" trademark invalid.

It is worth noting that multiple trademark lawsuits initiated by this company before have also all lost.

　　Several experts told reporters that groups of extortion and profit-making through malicious squatting of trademarks, malicious complaints, and professional claims still exist, and the industrial chain behind them has eroded and spread to the digital economy, seriously undermining the fair business environment and normal business order. , And even become a "commercial navy" situation, which should be severely cracked down.

　　Cybersquatting Trademark Blackmailing Merchants

　　Xiaolin is the owner of an online sex toy store.

In the second half of last year, hundreds of online sex toy stores, including his shop, were complained by a company in Qinhuangdao on the grounds of infringement of the "self-defense" trademark.

After receiving the notice of complaint, the merchant reported to the e-commerce platform that the term "self-defense" has replaced "masturbation", which is now a common commodity keyword in the sex toy industry.

　　The recording provided by Kobayashi showed that when negotiating with the complainant, the other party asked for a withdrawal fee of 5,000 yuan, which was only used for free until the end of the year, and declared that "the case can be withdrawn within 10 minutes after the money is in place."

For this blackmailing behavior, Xiaolin and other shop owners ignored them and asked Ali legal experts for help.

　　The investigation revealed that the main business scope of a company in Qinhuangdao does not include the business related to trademark complaints. The only business introduced on its official website is the sale of "Lincoln urns."

After checking the China Trademark Network, the reporter found that the company not only registered the "Lincoln" trademark, but also applied for registration of more than 100 trademarks including "DIESEL Sara", "Home", "Super 8" and "Red Kangaroo", most of which involve foreign brands and fun. Search term for supplies.

　　After verifying the relevant evidence materials, Ali legal experts determined that this was a typical act of malicious cybersquatting for illegitimate gains, and then recommended a team of professional intellectual property lawyers, and the agents filed a trademark invalidation procedure with the State Intellectual Property Office to protect themselves Legal rights.

　　After a lapse of one year, businesses are waiting for good news.

Recently, the State Intellectual Property Office determined that the conduct of a company in Qinhuangdao did not have the proper legitimacy to apply for trademark registration. “This type of improper registration will not only cause the relevant public to misunderstand the source of the goods, but also clearly exceed normal production and operation. It is necessary to disrupt the normal order of trademark registration management and harm the market order of fair competition."

The State Intellectual Property Office ruled to invalidate its "self-defense" trademark.

　　The lawsuit was lost

　　The reporter found from the online search of Chinese trademarks that a company in Qinhuangdao had applied for the registration of 105 trademarks. As early as 2012, this company started the "business" of squatting trademark registration.

　　Article 4 of the "Trademark Law of the People's Republic of China" stipulates that natural persons, legal persons or other organizations that need to obtain the exclusive right to use trademarks for their goods or services during production and business activities shall apply for trademark registration with the Trademark Office.

Malicious trademark registration applications that are not intended for use shall be rejected.

　　According to Yan Jin, the trademark attorney of Zhixinhe (Beijing) Intellectual Property Agency Co., Ltd., who helps businesses defend their rights, most of the trademarks applied for by a company in Qinhuangdao copied and imitated other well-known trademarks, which had obvious subjective views of “pending famous brands” and “free riders”. Malice, which violates the relevant registration application principles of the Trademark Law. Most of its pre-registered trademarks are not just trademarks that have been used in the country and have a certain reputation, but also include the names of some emerging brands and companies that have certain influence in the industry.

　　A certain company in Qinhuangdao has been involved in lawsuits because of repeated malicious registration of trademarks.

For example, the company's registered trademark No. 12157178 "ZOHO真巧" was sued by another company in August 2015.

In the end, the Beijing Higher People's Court ruled that the trademark was invalid in accordance with the law, and held that the trademark in question constituted a preemptive registration of the well-known "ZOHO" trademark that was previously used by another company.

　　However, after August 2015, a company in Qinhuangdao has not stopped its trademark registration.

On April 28 and 30, 2019, a company in Qinhuangdao also applied for the registration of the "ZOHO" related trademark.

　　Some of the trademarks of a Qinhuangdao company imitating others have been objected or invalidated by the real right holders of the trademarks. For example, the trademark No. 29531235 "ALIBABA INTELLIGENT NETWORK CONTROLLER" is currently in the opposition stage.

　　Among the 10 trademark lawsuits published on the China Judgment Documents website, a company in Qinhuangdao did not win a single case, and several trademarks were declared invalid.

　　It is worth noting that many staff engaged in trademark agency business revealed that after the rise of the Internet celebrity industry, many companies also targeted the nicknames of the Internet celebrities, registered them as trademarks and reselled them. Some trademarks even sold 200,000 yuan. High price.

In this gray industrial chain, there is no lack of trademark agencies to participate in it and seek improper benefits.

　　Proposal to establish a quick review agency

　　Qian Zhulin, a lawyer at Beijing Duohe Law Firm, believes that the newly revised Trademark Law in 2019 has to some extent cracked down on the traditional “hoarding of trademarks”, but malicious registrants are looking for “business opportunities” in the development of the Internet economy. Malicious intellectual property complaints, litigation and other methods to seek improper benefits.

　　Regarding this issue, the current commonly used method is to apply for trademark invalidation through administrative procedures, but the effect of traditional rights protection methods is limited: the administrative procedure cycle lasts for more than one year, and the maliciously complained business still faces the risk of "infringement" during the administrative procedure, forcing Unable to operate normally, resulting in huge economic losses.

Precisely because of the long administrative procedures and large losses, some merchants have no choice but to choose a "payment settlement" to compromise.

Even if the final trademark is declared invalid, there is no corresponding punitive measure, which makes it difficult to alert and demonstrate malicious registrants, resulting in extremely low cost of illegal registrants.

　　Qian Zhulin suggested that the trademark review department can create a quick review agency, and after receiving the relevant report materials, the case can be quickly concluded within 1 to 2 months, so that maliciously registered trademarks can be invalidated in a timely manner; such malicious preemptive trademark registrations can be profited Of companies are included in the “blacklist” for real-time publicity and increased penalties.

Administrative law enforcement and judicial organs can also set up channels for "confirmation of non-infringement" on relevant intellectual property rights protection platforms, and issue corresponding "confirmation of non-infringement" documents to reduce the burden of rights holders.

This will reduce the living space of malicious registrants, establish a good social fashion of honesty and credibility, promote the construction of a trademark integrity system, and maintain a good order of trademark registration and use.