The scenario of trademark registration, that is, under what circumstances do we need to register a trademark, or under what circumstances do we need to register a trademark? What is the purpose and motivation for registering a trademark to be supported and protected by law? Can trademarks be freely registered or used as an investment and profit making business activity? This article analyzes and provides answers based on legal provisions and case practices, in order to provide reference for trademark registration.

A trademark is a symbol used to identify the source of goods and services, and in a certain sense, it belongs to limited economic resources. National laws have strict management and legal order for trademark registration, use, management, and protection, and cannot be registered and used arbitrarily. Otherwise, not only will it not be protected by the law, but it will also be punished by the law.

Article 4 of the Trademark Law stipulates that "natural persons, legal persons, or other organizations that require exclusive trademark rights for their goods or services in production and business activities shall apply to the Trademark Office for trademark registration. Malicious trademark registration applications that are not intended for use shall be rejected. The provisions of this Law regarding commodity trademarks shall apply to service trademarks

Natural persons, legal persons, or other organizations that need to obtain exclusive trademark rights for their goods or services in production and business activities shall only apply for trademark registration with the Trademark Office. Simply put, registering a trademark for business purposes rather than for non business purposes is not in accordance with trademark regulations, is not advocated or encouraged by the Trademark Law, or even prohibited by the Trademark Law. Especially for "malicious trademark registration applications that are not intended for use", the Trademark Office can directly reject them during examination.

On April 24, 2023, the State Intellectual Property Office of the People's Republic of China held a press conference on the development status of intellectual property in China in 2022. At the conference, leaders of the State Intellectual Property Office released information stating that China has cracked down on 372000 malicious trademark registrations in the past year.

Business needs include current and future business needs, and the law allows for pre registered trademarks for future business needs. It also allows for appropriate trademark layout and defensive protection registration for trademark protection. However, if a large number of trademarks are registered in the short term or defensive trademarks are registered beyond the requirements of production and operation, the current trademark authority does not allow them, which belongs to exceeding the requirements of production and operation. It will be regarded by the Trademark Office as a "malicious trademark registration application that is not intended for use in the short term, exceeds the needs of normal business activities, and fails to provide an explanation of the intended use and necessary evidence within the statutory period", and should be rejected.

1. Trademark Rejection Notice No. 64269659

After examination, in accordance with the provisions of Article 4, Paragraph 1, Article 11, Paragraph 1 (3), and Article 30 of the Trademark Law, our office has decided to reject the above trademark registration application for the following reasons:

Your company's large-scale trademark registration and application in the short term, which exceeds the needs of normal business activities and fails to provide a statement of intention to use and necessary evidence within the legal period, is considered a malicious trademark registration application that is not intended for use and should be rejected. Moreover, this logo lacks the prominent features that a trademark should have and does not have the function of trademark recognition, and cannot be registered as a trademark.

2. Trademark Rejection Notice No. 64250934

After examination, in accordance with Article 4, Paragraph 1, and Article 30 of the Trademark Law, our office has decided to reject the above trademark registration application for the following reasons:

Your company has submitted a large number of trademarks such as "surname+alcohol" in the short term without providing valid evidence of the applied trademark. This is a malicious trademark registration application that is not intended for use and should be rejected.

3. Trademark Rejection Notice No. 61481559

After examination, in accordance with the provisions of Article 4, Paragraph 1, Article 30, and Article 31 of the Trademark Law, our office has decided to reject the above trademark registration application for the following reasons:

The applicant's extensive plagiarism or imitation of a well-known trademark by others on the same or similar goods or services, without providing a clear explanation of the intended use, constitutes a malicious trademark registration application that is not intended for use and should be rejected.

The behavior in trademark applications is regulated, so what about the law after successful trademark registration? Can it be protected? Of course not. The following cases can clearly tell us the legal and official perspectives:

The Uniqlo case

[2018 Supreme Law and Civil Law No. 396]

After registering trademark number 10619071 "UL", the trademark registrant attempted to sell the trademark to Fast Retailing Company for 8 million yuan, but failed. Instead, they filed more than 40 trademark infringement lawsuits against Fast Retailing and related companies nationwide, with some cases filed in the Supreme Court. The Supreme Court found that the right holder had no intention of using the trademark in question and only used it as a tool for unfair claims, without any losses, and their claims should not be supported, Later, the trademark was also declared invalid by the trademark authority as constituting a situation of "obtaining registration through other improper means", in violation of Article 41 of the Trademark Law.

Trademark Dispute Case of "Haitang Bay"

[Supreme Court 2013 Zhixing Zi No. 41]

Li Moufeng registered "Haitang Bay" not for business purposes, and before the registration of "Haitang Bay", the Hainan Provincial Government had already conducted a lot of publicity and had a certain level of popularity and influence, believing that registering the trademark has commercial value. The registration of multiple "Haitang Bay" trademarks was deemed by the Supreme Court to be a case of "obtaining registration through other improper means", in violation of Article 41 of the Trademark Law.

Trademark Case of "Gubei Water Town"

Beijing Xiaohao Technology Co., Ltd. registered the trademark "Gubei Water Town" involved in the case in beverage products. In 2016, it used the trademark No. 14073131 to send infringement warning letters to Gubei Water Town Company and file industrial and commercial complaints. Gubei Water Town Company filed an invalidation declaration with the China National Intellectual Property Administration The second instance administrative judgment of Beijing Gubei Water Town Tourism Co., Ltd. (2017 Jingxingzhong No. 3328) revoked the trademark "Gubei Water Town" No. 14073131.

Furthermore, Gubei Water Town Company filed a compensation lawsuit against Beijing Xiaohao Technology Co., Ltd. for unfair competition with the People's Court of Dongcheng District, Beijing. The first instance court held that the above-mentioned actions infringed on the legitimate rights and interests of Gubei Water Town Company, affected its goodwill and normal operation, and disrupted the order of trademark registration, resulting in the legitimate application of Gubei Water Town Company to register the trademark No. 23409982 "Gubei Water Town" being hindered, Violating the principle of good faith and constituting unfair competition, the first instance judgment (2020 Jing 0101 Min Chu 6263 Civil Judgment):

1、 Beijing Xiaohao Technology Co., Ltd. shall compensate Beijing Gubei Water Town Tourism Co., Ltd. for economic losses of 28000 yuan and reasonable expenses of 35000 yuan for the unfair competition behavior involved within ten days from the effective date of this judgment; 2、 Within 30 days from the effective date of this judgment, Beijing Xiaohao Technology Co., Ltd. shall publish a statement in the China Intellectual Property Daily regarding the unfair competition behavior involved in the case to eliminate the impact (the content of the statement must be reviewed by the first instance court, and if it is not fulfilled within the time limit, the first instance court will publish the main content of this judgment in relevant media, and the cost shall be borne by Beijing Xiaohao Technology Co., Ltd.). Beijing Xiaohao Technology Co., Ltd. is not satisfied with the first instance civil judgment, The appeal was upheld in the second instance of the Beijing High Court (2021) Jing 73 Min Zhong 4553).

In March 2023, the People's Court of Dongcheng District, Beijing executed a ruling (2022 Jing 0101 Zhi No. 9913) to include the executed person Beijing Xiaohao Technology Co., Ltd. in the list of restricted consumption personnel.

The "Yuntong" trademark speculation case

Yunnan Yunrui Zhixiang Cultural Communication Co., Ltd. and related entities operate the "Yuntong" series of business labels by registering the series "Yuntong" in China, the United States, and other places, and registering "China Yuntong Group Co., Ltd." in Hong Kong, and the United States Olohai Group Company. They also promote and create momentum through media, directing and performing their own performances. On June 1, 2020, Yunnan Copper Industry Co., Ltd. (000878.SZ, hereinafter referred to as "Yunnan Copper") issued a clarification notice: the company stated that it was concerned about the media's report that "Yunnan Copper Group acquired a batch of trademark intellectual property rights of American companies for 31.2 billion yuan" as the main content. Yunnan Copper stated that the above media reports are not true, and the "China Yuntong Group Co., Ltd." mentioned in the reports does not have any legal or de facto association with Yunnan Copper and its controlling shareholder Yunnan Copper (Group) Co., Ltd.

Yunnan Copper Industry solemnly stated in the clarification announcement that, after verification from its controlling shareholder Yunnan Copper Industry (Group) Co., Ltd., Yunnan Copper Industry (Group) Co., Ltd. has not purchased any trademarks since 2019. At the same time, Yunnan Copper (Group) Co., Ltd., Yunnan Copper and Yunnan Copper's subsidiary in Hong Kong, Yuntong Hong Kong Limited, are all related to the "China Yuntong Group Co., Ltd." and "China Yuntong Co., Ltd." mentioned in the above media reports( http://00033.HK )”There is no legal or factual connection.

Yunnan Yunruizhixiang Cultural Communication Co., Ltd. and related entities have not only failed to hype up the transfer of the "Yuntong" trademark, but also found through China Trademark Network that the series of Yuntong trademarks of China Yuntong Group Co., Ltd. are in a rejected or invalid state.

From the analysis of legal and practical cases, it can be seen that trademarks cannot be registered arbitrarily, used as a tool for profit, or registered as an investment benefit; Only honest trademark registration that meets the needs of production and operation is protected and encouraged by law. (Author: Chen Bing)