Legal basis
Article 44.1 of the Trademark Law: If a registered trademark violates the provisions of Article 4, Article 10, Article 11, Article 12 or Article 19.4 of this Law, or has been registered by deception or other improper means, the Trademark Office shall declare the registered trademark invalid; Other entities or individuals may request the Trademark Review and Adjudication Board to declare the registered trademark invalid.
Elucidation
The above provisions are about the handling of the acquisition of registered trademarks by deception or other improper means. The application for trademark registration shall comply with the principle of good faith, and shall not be obtained by deceptive means, nor shall it be obtained by other improper means such as disrupting the order of trademark registration, harming the public interest, improperly occupying public resources or seeking improper benefits by other improper means.
Applicable Conditions
3.1 Obtaining trademark registration by deception
Such behavior refers to the registration of a disputed trademark by the registrant, who, when applying for trademark registration, resorts to fabricating or concealing the truth, submitting forged application documents or other supporting documents, and other means to defraud trademark registration. Such conduct includes but is not limited to the following situations:
(1) Forging the seal or signature on application documents;
(2) Forging or falsifying the applicant's identity documents, including using false identity cards, business licenses, or altering important registration items on identity documents such as identity cards and business licenses;
(3) Forging other supporting documents.
3.2 Obtaining trademark registration by other improper means
3.2.1 Meaning
Such behavior means that there is sufficient evidence to prove that the disputing trademark registrant obtains registration by other improper means than deception, such as disturbing the order of trademark registration, harming the public interest, improperly occupying public resources or seeking illegitimate interests by other means, and its conduct violates the principle of good faith and damages the public interest.
3.2.2 Other improper means
The following circumstances are referred to as "obtaining trademark registration by other improper means" in the Article:
(1) The applicant of the disputed trademark has applied for registration of multiple trademarks, which are identical or similar to the trademarks of others with certain popularity or strong distinctive features;
(2) The applicant of the disputed trademark has applied for registration of multiple trademarks, which are identical or similar to others’ trade name, enterprise name, name of social organization and other organization, name of a trade with a certain influence, packaging, decoration, etc.;
(3) Other circumstances that may be deemed to have been obtained by improper means.
3.2.3 Consider factors
First, if the applicant obtains trademark registration by improper means, the disputed registered trademark shall be intended to be used or have actually been put into commercial use. Second, as for the disputed trademark registered through improper means, it is not limited to the trademark applied by the applicant himself, but also includes the trademark applied by the person who has collusion or specific identity relationship or other specific connection with the applicant of the disputed trademark.
Case Study
In the cited case, we successfully invalidated the disputed trademark by analyzing the applicable conditions of obtaining trademark registration by other improper means, and proving that the trademark owner constitutes the improper behavior as stipulated in the Article 44.1 of the Trademark Law.
Argument one: one of the circumstances that constitutes obtaining trademark registration by improper means is that the applicant of the disputed trademark has applied for registration of multiple trademarks, which are identical or similar to the trademarks of others with certain popularity or strong distinctive features.
Case analysis: the disputed trademark is completely consistent with a well-known trademark of Company A, and is designated for use on products closely related to Company A's product "condom", which is likely to cause confusion and misidentification among the relevant public. In addition to the disputed trademarks, we also found that Company B had applied for and received more than 300 trademarks that were identical or similar to a well-known trademark of Company A and its corresponding romanization in multiple categories, which obviously exceeded its actual business needs. After trademark search and comparative analysis, we believed that Company B's behavior belonged to the circumstance stated above, and submitted relevant evidence materials, which was supported by the court.
Argument two： regarding the obtained trademark registration by improper means stipulated in Article 44.1 of the Trademark Law, the disputed trademark shall be intended to be used or has actually been put into commercial use.
Case analysis: through various searches, we found that Company B had actually put the disputed trademark into commercial use, and misled consumers, by various means (including the use of Company A's advertising slogan, the use of specific packaging, etc.), into believing that its products originated from the specific place of origin and were authentic product brands. We believed that the use of Company A’s trademark is "free-riding" or "taking advantage of famous brand", which is the factor to be considered as stated above, and further proved that the trademark registration was obtained by improper means, and the court agreed.
Argument three: Article 44.1 of the Trademark Law stipulates that the acquisition of trademark registration by improper means shall not be limited to the trademark applied by the applicant himself, but also includes the trademark applied by the person who has collusion or specific identity relationship or other specific connection with the applicant of the disputed trademark.
Case analysis: in the first instance, we found that the original applicant of the disputed trademark, an affiliated enterprise of Company B, applied for registration of 129 trademarks during the same period as the application for the disputed trademark, including the disputed trademark and other well-known brands related to contraception product and trademarks with adverse effects. After an in-depth investigation, we found that Company B and its more than 10 affiliated companies applied for registration of more than 5,000 trademarks, which obviously exceeded the actual business needs, and the applied trademarks included the above-mentioned well-known brands and trademarks with adverse effects. We submitted the information and related evidence of the affiliated enterprises’ hoarding of 129 trademarks and malicious preemptive registration of a large number of well-known trademarks, as well as the evidence that Company B and more than 10 of its affiliates had maliciously hoarded lists of trademarks, which formed a complete chain of evidence and belonged to the factor to be considered as stated above, which was used to prove that Company B and its affiliated enterprises constituted a situation of "obtaining registration by other improper means" as stipulated in the Trademark Law, and the court finally affirmed it.
To sum up, from the above three aspects, we successfully proved that the acts of the trademark owner at issue constituted "obtaining registration by other improper means" as stipulated in Article 44.1 of the Trademark Law, and finally won in the first and second instance, safeguarding the rights and interests of the represented party.
Conclusion
The provision of Article 44.1 of the Trademark Law plays an important role in protecting trademark rights and interests and maintaining market order. Through an in-depth understanding of relevant laws, regulations and judicial practices, right holders can better protect their trademark rights and interests. In the meantime, we should resolutely resist the act of obtaining trademark registration by improper means, create a high-quality trademark ecological environment, and jointly safeguard market order and public interests.
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