How to stop the growing trend of malicious cybersquatting


  Experts suggest applying "punitive damages" to malicious cybersquatting

  □ Our reporter Zhao Li

  On February 14, the State Intellectual Property Office issued a notice to crack down on malicious squatting of trademarks such as "Bingdundun" and "Gu Ailing" in accordance with the law.

In accordance with the provisions of Article 10, Paragraph 1, Item (8) of the Trademark Law of the Regulations on the Protection of Olympic Symbols, the Bureau rejected 429 trademark registration applications such as No. According to Article 44, Paragraph 1 of the Trademark Law, 43 registered trademarks including No. 41126916 "Bingdun Dun" and No. 38770198 "Gu Ailing" were declared invalid on their own initiative.

  Chang Sha, a lawyer from Beijing Jingdu Law Firm, who has been engaged in relevant practical operations for a long time, said that due to violations of relevant laws and regulations of the trademark law, the probability of such trademarks passing the registration application is very small in practice, even if the trademark registration applicant uses improper means to make such trademarks Through a registration application, the Trademark Office can also voluntarily revoke or declare the registered trademark invalid on the grounds that the trademark is "detrimental to the national social and public interests".

  In response to the application for trademark registration of the name of an Olympic athlete, the Chinese Olympic Committee has issued a solemn reminder that it is not allowed to use the name of an Olympic athlete to register a trademark maliciously. Those who have the above behavior should promptly withdraw and stop the implementation of the trademark registration application.

On August 19, 2021, the State Intellectual Property Office issued a notice that the squatting trademarks such as "Yang Qian" and "Chen Meng" will be quickly rejected in accordance with the relevant provisions of the Trademark Law, and the list of applicants and agencies has been exposed. Create a high-pressure situation to severely crack down on malicious squatting of trademarks.

  From the relevant list rejected by the State Intellectual Property Office, it can be found that the individuals and enterprises that squatted on the trademarks associated with the names of well-known Olympic athletes came from many parts of the country.

Among the agency companies, there are many well-known Internet companies.

Whenever a major event of public opinion occurs, there are always some businesses maliciously squatting trademarks.

Last year, some people squatted on the hot spots and registered trademarks such as "Zhong Nanshan", "Huoshenshan" and "Leishenshan".

  What is malicious squatting?

  "For the names of people well-known to the public, their names are closely related to their own commercial value. For example, the trademark registrant conducts cybersquatting without obtaining his authorization, and coerces the name right holder to cooperate, or asks for high trademark transfer fees. , license royalties, etc., it belongs to malicious cybersquatting." Chang Sha said that the core criteria for cybersquatting are "not for the purpose of use" and "malicious".

A large number of hoarding trademarks without justifiable reasons and applying for a large number of registered trademarks all involve the elements of trademark squatting.

  According to Article 4 of my country's newly revised Trademark Law, an application for registration of a trademark in bad faith that is not intended for use shall be rejected.

  In recent years, malicious squatting of well-known trademarks, trade names, and celebrity names at home and abroad is not uncommon. After successful squatting, the parties leave the trademarks idle and wait for them to be sold, and even the same entity hoards hundreds or even thousands of trademarks. .

Malicious squatting and hoarding of trademarks has become a way for some companies and individuals to make money.

  Regarding the reason for the repeated prohibition of malicious squatting of trademarks, Li Shunde, a researcher at the Institute of Law of the Chinese Academy of Social Sciences, believes that the main reason is that after squatting trademarks, huge profits can be obtained, and many businesses are motivated by interests to participate.

  "The main reasons for trademark squatting and abnormal registration are the low cost of illegality, and some applicants and agencies have weak awareness of law-abiding and morality." Chang Sha said that too low trademark registration costs will also lead to lower thresholds for trademark registration. The current trademark application fee is basically 300 yuan (only 270 yuan for electronic submission).

The introduction of policies to support and reward trademark registration in various places is a good thing, but objectively it also reduces costs for professional groups specializing in trademark squatting and hoarding.

  Li Junhui, a special researcher at the Intellectual Property Research Center of China University of Political Science and Law, believes that because the trademark law applies to malicious squatting acts is "loss compensation", which makes it difficult to assess the loss of the infringed person and make it difficult to protect their rights. "Punitive damages" are applicable to the behavior of betting, so as to fundamentally stop the intensifying trend of malicious cybersquatting.

  So, if the name of a public figure is maliciously registered, how should the rights be protected?

  In this regard, Huang Qiuping, judge of the Fourth Civil Division of the People's Court of Xicheng District, Beijing, told reporters that in the case of malicious squatting of the names of public figures, the public figures become the prior rights holders, and they or their stakeholders can request the Trademark Review and Adjudication Board to declare This registered trademark is invalid.

Although the administrative remedies need to go through trademark invalidation review, review by the Trademark Review and Adjudication Board, first instance and second instance of trademark administrative litigation, which takes a long time, it is the most effective remedy.

Judicial relief is to file an unfair competition lawsuit directly against the use of malicious registered trademarks and claim damages.

This kind of rights protection method can form a deterrent to malicious use and safeguard the rights of prior rights holders in a timely manner. However, if the maliciously registered trademark has not yet been used, it is not necessary to file a civil lawsuit against the registration behavior, and it is necessary to further investigate the malicious registration through administrative procedures. The trademark application is invalid.

  At a special press conference held on February 14, the spokesperson of the State Intellectual Property Office and the person in charge of the Intellectual Property Protection Department said that they will crack down on and regulate violations of Olympic intellectual property rights with a "zero tolerance" attitude.

  In this regard, the interviewed experts agreed that at present, the State Intellectual Property Office has been very strict in cracking down on malicious trademark registration, and it also strictly protects some social hot issues that everyone is very concerned about, such as the names of Olympic athletes and the trademarks of the mascots of the Winter Olympics.

At the same time, there are also examples of market supervision and administration departments punishing applicants and agencies with repeated malicious registrations or serious circumstances.

  The reporter noticed that the "Regulations on the Administration of Intellectual Property Credit of the State Intellectual Property Office" recently issued by the State Intellectual Property Office clarified that malicious trademark registration applications will be classified as dishonest acts.

  Regarding how to eradicate abnormal trademark applications and malicious squatting, Li Junhui believes that multiple efforts are needed:

  First, in legislation, further clarify the characteristics and penalties of abnormal trademark applications and malicious squatting;

  Second, the society should form a good fashion for trademark registration applications, let the principle of good faith gradually form a rigid binding force in trademark application, review and approval, and guide relevant institutions or individuals to consciously resist abnormal or non-good faith trademark registration behaviors;

  Third, trademark agencies and review agencies should play a role in strengthening the identification and interception of abnormal or non-good faith trademark applications in application submission, registration review, etc. It should have the value and role of "protecting the interests of consumers, producers and operators, and promoting the development of the socialist market economy".

  "On the one hand, the registration and use of trademarks must abide by the principle of good faith, and it is prohibited to register and use trademarks improperly and to make profits in violation of good faith. When registering, we must strictly abide by the provisions of the trademark law, and understand that registration is absolutely not allowed. A trademark that has the prior rights of others and is similar to others. Only when a trademark is registered under the premise of legality can it be effectively protected by law.” said Zheng Ning, director of the Cultural and Legal Research Center of the School of Cultural Industry Management, Communication University of China, On the other hand, sports stars and celebrities should also enhance their brand awareness and focus on the operation of their own brands.

With the assistance of a professional team, we can start the trademark layout as soon as possible and register the trademark in advance.

Register trademarks in relevant categories to prevent problems before they occur and avoid trademark squatting.