Enterprises and the self-employed individuals always face determining their business scope when setting up. The general principle of determination is being accordance with its actual development orientation and future layout. However, there do exist some enterprises blindly pursuing extension of business scope and ignoring trademark registration issues, thus causing obstacle on the way of trademark registration. Then, what kind of business scope would affect trademark registration?
The category of trademark registration for general enterprises and individuals isn’t subject to business scope, which is also the main reason why most enterprises can register their trademarks in all categories. There is only one exceptional case: if the business scope includes businesses such as trademark agency, intellectual property agency, etc., the correspondent trademark registration can only choose the category of 4506, legal services, and the applications for trademark registration in other categories would be rejected.
l Related Regulation
Article 19 (4) of the Trademark Law stipulates that trademark agencies shall not apply for trademark registration in other categories except for the category of agency service. Meanwhile, Article 33 and 44 stipulate that Article 19 (4) can act as the legal ground of trademark opposition and invalidation. Guidelines for Trademark Examination points out that the legislative purpose of Article 19 (4) is to protect public interest, preventing trademark agencies from utilizing their business advantages to maliciously register others’ trademarks for profit, leading to a disorder of trademark market and infringement of the interest of actual trademark owners. Under such background, this article tends to analyze the identification of trademark agency mentioned in the Article 19 (4), and the application of the provision in cases of trademark opposition and invalidation.
l The Identification of Trademark Agency
Chapter 13 of the Guidelines for Trademark Examination defines trademark agency as (1) accredited service agency and/or law office engaged in trademark agency business; (2) an entity that no record has been filed, but is indicated as engaging in trademark agency, intellectual property agency and other businesses when registered with the market supervision and administration department, or (3) an entity that is not registered with the market supervision and administration department as engaging in trademark agency and other businesses, but there is actual evidence to prove that it is engaged in trademark agency business.
The first two kinds of trademark agencies are easy to identify. For example, during WEIPR’s daily monitoring of similar trademarks, it was found that a company had applied for the registration of a trademark similar to that of our client. By querying its business scope as shown in the picture below, WEIPR determined that the company belonged to trademark agency, and therefore filed an objection to the Trademark Office. In addition, in current judicial practice, as long as the business scope includes “intellectual property agency”, the agency will usually be identified as a trademark agency, and it does not necessarily have to include the word “trademark”.
However, if the company name only contains the words “intellectual property”, “trademark”, etc., and there is no evidence to prove that the entity engages in trademark agency services, it does not belong to trademark agency. For example, in the case of (2015) IP Judicial Protection of Beijing Courts, Administrative First Instance No. 6287, Sheraton International IP LLC. versus Trademark Review and Adjudication Board, an administrative dispute over review of rejected trademark application, the court held that Sheraton IP LLC., as a company registered in the United States, covers the business scope of managing and authorizing the intellectual property rights of the Sheraton-related brands within the Starwood Hotels & Resorts Worldwide Group, to which it belongs, but does not engage in trademark agency business, nor has it registered with the Chinese industrial and commercial administrative department, nor has it filed with the Trademark Office to indicate its engagement in trademark agency business. The evidence submitted by Sheraton IP LLC. during the trademark review stage can also prove that it does not engage in trademark agency business. In the absence of relevant evidence proving that Sheraton IP LLC. is a trademark agency, the Trademark Review and Adjudication Board determined that it is a trademark agency based on the fact that the words “intellectual property” are included in its company name, and thus rejected the disputed trademark application. Such identification is obviously wrong.
Compared with the first two situations, the third situation of identifying trademark agency from the perspective of actual engagement is more difficult. This situation should be determined on a case-by-case basis according to evidence.
l The Practical Application of Article 19 (4) of Trademark Law in Actual Examination
1. Invalidating Trademarks Based on Business Scope Indicating Services such as Trademark Agency, IP Agency, Etc.
Case A: Invalidation Request of Trademark No. 60366001 “富位”
Applicant: VALDIMIR PTE.LTD.
Respondent: WangZun (Xiamen) Technology Holding Group Co., LTD.
Review Comments: Investigation finds out that the respondent’s business scope included IP services before the filing date of the disputed trademark application. The respondent should know that trademark agency shall not apply for other trademarks of goods and services than that of agency services. However, it failed to fulfill the obligation of avoidance, thus the disputed trademark registration constitutes violation of Article 19 (4) of Trademark Law.
2. The Act of a Trademark Agency Applying for Trademark Registration in the Name of a Person with Whom It Has a Specific Relationship Shall Be Deemed as the Act of the Agency.
Case B: Rejection on the Trademark No.69942698 “抖企通”
Opponent: Beijing ByteDance Network Technology Co., LTD.
Respondent: Ren Yuyan
Review Comments: Documented evidence showed and examined that Ren Yuyan is the supervisor of Zhongheng Sihai Finance and Tax Service Co., LTD., the opposed trademark agent of this case. The business scope of the company includes trademark agency, according to which it can be determined that the opposed trademark is a trademark agency applying for registration under the guise of its company supervisor to achieve the purpose of circumventing the law. Thus the act of the respondent could be regarded as the act of a trademark agency, leading to the result that the opposed trademark registration constitutes violation of Article 19 (4) of Trademark Law.
Case C: Rejection on the Trademark No. 69142939 “臻要强”
Opponent: Guizhou Jinsha Cellar Liquor Co., LTD
Respondent: Hebei Zhen Gong Fu cultural development Co., LTD
Review Comments: When the opposed trademark application was filed, Shen Tong, the legal representative of the respondent, was also the legal representative of the respondent’s agency Baoding Wuhuo IP Agency Co., Ltd. Therefore, Shen Tong, the legal representative of the respondent was actually an employee of the trademark agency, and accordingly, it could be concluded that the opposed trademark was registered by the trademark agency in the name of its legal representative, in order to achieve the purpose of evading the law. The behavior of the respondent can be regarded as that of a trademark agency, and it concluded that the opposed trademark registration constitutes violation of Article 19 (4) of Trademark Law.
3. The Transfer of the Trademark and the Change of the Applicant’s Business Scope Shall Not Affect the Identification of Trademark Agency.
Case D: Invalidation Request Trademark No. 14186272 “外星人”
Applicant: Dell Inc.
Respondent: Zhanjiang Lican Technology Co., LTD
Review Comments: Wang Hongrui, the original registrant of the disputed trademark, is a 50% shareholder of Beijing Sndrn International Intellectual Property Agency Co., Ltd., the trademark agent of the disputed trademark, and is also the legal representative and 60% shareholder of Shanghai Sndrn Intellectual Property Agency Co., Ltd. Both of the above-mentioned agencies are registered trademark agencies. Upon investigation, the original registrant applied for registration of 43 trademarks in Class 3, Class 11, Class 25, and Class 27, and the trademark agency for the above-mentioned 43 trademarks is Beijing Sndrn International Intellectual Property Agency Co., Ltd. The facts above show that original registrant and the above-mentioned trademark agency are closely related business entities. Although the original registrant is a natural person but not a registered trademark agency, given the close relationship between him and the above-mentioned trademark agency, his behavior of registering a large number of trademarks (except for agency services) should also be subject to the constraints of Article 19 (4) of the Trademark Law (2013). Otherwise, the trademark agency may hoard trademarks through affiliated companies to circumvent the provisions of Article 19 (4) of the Trademark Law. In summary, the disputed trademark registration constitutes violation of Article 19 (4) of Trademark Law.
Case E: Decision on the Review of Rejected Figurative Mark Application No. 71689363
Applicant: Youpei Chuanglian (Xi 'an) Education Technology Co., LTD
Review Comments: The business scope of the applicant’s business license before the change included “trademark agency”, hence the applicant belongs to trademark agency as stipulated in Article 19 of the Trademark Law of the People's Republic of China. Although the applicant later filed a change registration with the market supervision section and proactively deleted the “trademark agency” out of the business scope, the provision of the Article 19 (4) of the Trademark Law, as a mandatory legal norm, is intended to prohibit trademark agencies from applying for the registration of trademarks on goods or services other than agency services. If it is allowed to remove the barrier of trademark agency applying for registration of non-agency service mark by changing its business scope after the filing date of the disputed trademark application, then this provision will lose its regulatory role, because once the trademark application is accepted, trademark agencies can register non-agency service marks by changing their business scope, which may objectively condone trademark agencies in violation of the principle of good faith and using their own business advantages to maliciously register trademarks. Based on the factors above, the applicant’s change of business scope cannot be regarded as the elimination of registration barriers.
l Conclusion
In summary, the determination of “trademark agency” indicated in Article 19 (4) of the Trademark Law is generally based on the applicant’s business scope at the time of trademark application, the list of agencies filed with the Trademark Office, etc., or a comprehensive consideration of whether there is a relationship between the applicant and trademark agency in combination with the evidence on file. If Article 19 (4) of the Trademark Law can be properly used as an absolute reason, it will greatly increase the probability of rejecting or invalidating opponents’ trademarks. However, this also reminds non-trademark-agency companies not to contain services such as “trademark agency” and “intellectual property agency” when registering their business scope, so as to avoid restrictions when applying for trademark registration and causing unnecessary losses.
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