China's State Administration for Market Regulation Releases Typical Cases of Intellectual Property Enforcement for 2021-Part 4

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14. The Xiamen Municipal Market Supervision Bureau investigated and dealt with the case of Xiamen Sanjiusan Technology Co., Ltd. disrupting the order of the trademark agency market by improper means

The Xiamen Municipal Market Supervision Bureau received tips indicating that Xiamen Sanjiusan Technology Co., Ltd. was suspected of illegal acts of trademark agency, and immediately launched an investigation.

After investigation, Xiamen Sanjiusan Technology Co., Ltd. applied for the registration of 61 trademarks such as "N" and "Global Franchise Network". There was a situation of "applying for the same trademark for the same or similar goods or services for different clients". Due to the exclusivity of trademark registration, the same trademark can only be successfully registered for the same or similar goods and services. The act of applying for the registration of the same trademark for different clients not only damages the interests of the client, but also consumes trademark examination resources. The behavior of the parties violated Article 4 of "Several Provisions on Regulating the Behavior of Trademark Application and Registration" and disrupted the order of the trademark agency market. On March 30, 2021, the Xiamen Municipal Market Supervision Bureau imposed administrative penalties in accordance with the law, ordered the parties to make corrections, and imposed a warning and a fine of 23,500 RMB.

In order to standardize the order of trademark application and registration, the State Administration for Market Regulation issued the "Regulations on Regulating the Behavior of Trademark Application and Registration", which clarified the specific circumstances of illegally applying for trademark registration. In this case, the party, as a professional trademark agency, still carried out the act when it should have known that its agency act was illegal, disrupting the industry order, and the party and the responsible person should be punished.

15. The Sichuan Provincial Market Supervision Bureau investigated and dealt with the case of Sichuan Delong Trademark Agency Co., Ltd. disrupting the order of the trademark agency market by improper means

Sichuan Provincial Market Regulatory Bureau received a tip that Sichuan Delong Trademark Agency Co., Ltd. was suspected of fabricating historical materials in its application for the trademark for "Guanmen Hongmei" geographic indication  and immediately launched an investigation.

It was found upon investigation that during the course of applying for the registration of the "Guanmen Hongmei" geographic indication trademark on behalf of the party concerned, because the application for registration of the "Guanmen Hongmei" geographic indication trademark pneeded evidence on the objective existence of and the reputation of "Guanmen Hongmei", the person in charge of the party concerned, He, was able to pass the examination of the application for the "Guanmen Hongmei" geographic indication trademark, by tampering with the relevant content of the Nanjiang County Logo, and submitted false evidence materials regarding the objective existence of "Guanmen Hongmei" geographic indication and its reputation. Upon material examination, the trademark registration examination authority found that the materials submitted by the party were inconsistent with the content recorded in the Nanjiang County Chronicles collected by the State Book and Literature Collection Institution, and rejected the trademark application on August 6, 2021. The party disguised facts, provided false evidence, and disrupted the order of the trademark agency market by improper means, and violates Article 27 of the Trademark Law and Article 88 of the Regulation on the Implementation of the Trademark Law. On January 27, 2022, the Sichuan Provincial Market Supervision Bureau imposed an administrative penalty according to law, ordering the party concerned to immediately correct the illegal act and impose a fine of 40,000 RMB on the party concerned and 20,000 RMBon the person in charge and the directly liable person, He.

Strictly cracking down on illegal acts in the process of trademark registration application is an important content of the intellectual property law enforcement of market regulatory departments. This is a case regarding applying for the registration of a geographical indication certification trademark on behalf of clients, in which a party concerned submits false materials for the purpose of obtaining the trademark registration by fraud, which has disturbed the order of the trademark agency market and shall be severely punished according to law.

16. The Shanghai Songjiang District Market Supervision Bureau investigated and dealt with Mai Qian Intellectual Property Agency (Shanghai) Co., Ltd. and other malicious applications for trademark registration

The Market Supervision Bureau of Songjiang District received the clues of delivery, which reported that Maiqian Intellectual Property Agency (Shanghai) Co., Ltd. colluded with its affiliated company to hoard trademarks for sale, and immediately launched an investigation.

It was found upon investigation that from 2018, the legal representative of Mai Qian Intellectual Property Agency (Shanghai) Co., Ltd. persuaded his relatives and friends to successively register six affiliated companies by sharing trademark assignment fees and represented the aforesaid companies in applying for registered trademarks, and contacted a third party through the Internet platform to assign registered trademarks as a means of making profits. From November 1, 2019 to the date of issuance of this Notice, Mai Qian Intellectual Property Agency (Shanghai) Co., Ltd. applied for the registration of 1,058 registered trademarks for 6 affiliated companies, successfully registered 504 registered trademarks, transferred 32 trademarks, and obtained illegal proceeds of 24,250 RMB. Mai Qian Intellectual Property Agency (Shanghai) Co., Ltd.'s acts violated Article 19 of the Trademark Law, and its affiliated companies violated Article 4 of the Trademark Law and Article 3 of the Several Provisions on Regulating the Application for Trademark Registration. On December 28, 2021, the Market Supervision Bureau of Songjiang District legally imposed an administrative penalty, ordering the party concerned to immediately make correction, confiscating illegal gains of 24,250 RMB and imposing a fine of 165,000 RMB.

In this case, the parties did not intend to use the trademarks but instead to hoard trademarks in large quantities and sell them, improperly occupied public resources, and disturbed the order of the trademark registration application market. The investigation and handling of this case is conducive to guiding the return of trademark registration applications to the source of rules for purposes of use and maintaining a sound order of trademark registration applications.

17. Shenzhen Market Supervision Bureau Bao'an Branch investigated and dealt with a malicious application for registered trademark by Pan

According to the work deployment of Shenzhen Market Supervision Bureau, Bao'an Branch investigated the applicant Pan Mou who was suspected of maliciously applying for the registration of the "Quanhongchan" (an Olympic athlete) trademark.

After investigation, Pan entrusted Shenzhen Huangjia Intellectual Property Co., Ltd. to apply for the registration of the "Quanhongchan" trademark in his own name, covering 65 kinds of goods or services in six categories. As the legal representative of Shenzhen Huangjia Intellectual Property Co., Ltd., Pan is specialized in trademark registration agency work. Without the authorization of Quanhongchan and without actually carrying out relevant business activities, Pan maliciously applied for the registration of multiple "Quanhongchan" trademarks, infringing upon the rights of others' names and their legitimate rights and interests, and causing adverse social impacts. The behavior of the parties violated Article 7 of the Trademark Law of the People's Republic of China and Article 3 of the Several Provisions on Regulating the Behavior of Trademark Application for Registration. On October 26, 2021, the Bao'an Branch issued an administrative penalty in accordance with the law, ordered the parties to make corrections immediately, gave a warning, and imposed a fine of 5,000 RMB.

Olympic athletes sweat and win glory for the country in the Olympic arena, but some trademark applicants and trademark agencies, for their own selfish interests, frequently squat on hot names and maliciously register trademarks, causing adverse social impact. The investigation and handling of the case responded to social concerns in a timely manner. Whether it is an individual, an enterprise or a trademark agency, any malicious application for trademark registration will be punished according to law.

Source: natlawreview.com-Aaron Wininger, Schwegman Lundberg Woessner IP Law Firm

Editor: IPR Daily-selly