Beijing Ting Jian Dan IT Co., Ltd. (hereafter referred to as “Applicant”) has entrusted Janlea as the agent to file the application to China National Intellectual Property Administration, which to request the invalidation against the trademark “停简单” (Ting Jian Dan in Pinyin) (hereinafter referred to as the “disputed trademark”) that got the approval for registration under Xiamen Xiantao Assets Management Co., Ltd. (hereinafter referred to as “respondent”). Recently, Janlea has received the decision regarding the declaration of invalidation from China National Intellectual Property Administration, the result is, the disputed trademark has been declared as invalidation. The application for the invalidation has been supported, thus, the agent issue has achieved success. 

Brief Introduction to the case

20th June 2016, the respondent has filed the application for the registration of trademark to China National Intellectual Property Administration, which applied for registering the trademark “停简单” (Ting Jian Dan in Pinyin) with no. 20357585 on Class 38, i.e. “news agency service; video-on-demand transmission, offering online forum, video conference service; transmission of digital document; offering online chatting room; transmission of information”. The publication of the approval of registration has been issued on 6th August 2017. The applicant entrusted Janlea to file the application for the invalidation against the disputed trademark on 26th December 2019, to request the announcement on the invalidation against the disputed trademark. 

Parts of the applicant’s grounds have been sustained by China National Intellectual Property Administration after the examination (CNPIA), CNPIA held that, the respondent has applied for registering over 350 trademarks on several goods and services, many of them were copied or imitated other person’s name, famous cartoon figure’s name and enterprise’s name. Such kind of behaviors obviously beyond demands of normal production and operation, with intention of gaining illegal benefits or making improper competition based on other party’s famous brands, disturb the normal administration order of trademarks’ registration, furthermore, has constituted the status “gaining the registration via improper means”, which stipulated by Article 44-1 of Chinese Trademark Law, as a result, the disputed trademark has ruled to declare for the invalidation. 

Analysis on the case 

In the process of preparing the case regarding the declaration of invalidation, we held that, through full analysis and study of the case, the designated service, class 38 i.e. “news agency service; video-on-demand transmission, offering online forum, video conference service; transmission of digital document; offering online chatting room; transmission of information”, is different from the internet smart parking services in terms of functions and service modes, which are put into actual use under the applicant’s enterprise name “停简单”(Ting Jian Dan in Pinyin). If the legal rights of the applicant’s prior right on Chinese brand only to be claimed for protecting under Article 32 of Chinese Trademark Law, it will have less chance to obtain the support from China National Intellectual Property Administration. As a result, besides the normal claim on the prior legal rights, also, we have focused on searching the respondent’s background information, information of the trademark that was applied for the registration, prior judgements related to the respondent, we have found out over 350 trademarks applied by the respondent, moreover, many of these trademarks are similar to or identical with names, cartoon figures and other trademarks with strong distinctiveness. Therefore, we have shifted the key point of the case to the application to Article 44-1 of Chinese Trademark Law. 

As per stipulated of Article 44-1 of Chinese Trademark Law, registered trademarks, which obtain the registration by violates regulations of Article 4, Article 11, Article 12 and Article 19-4 of Chinse Trademark Law, or by means of deception means or other improper means, this registered trademark will be declared for invalidation by the Trademark Office. Other units or individuals can request the Trademark Review and Adjudication Board (TRAB) to declare the invalidation on such registered trademark. Among which, “other improper means” indicates that behaviors trademark registration order and the public benefits are disturbed or damaged by other means other than deception means, or improperly occupies public sources or seeks for improper benefits, so as to obtain the approval on registration of disputed trademark, including the behavior that the applicant of the disputed trademark adopts large-scale preemptive registration of others’ well-known trademarks.  

As per the description of “obtain the registration by means of other improper means” in the amended version of Trademark Examination Standards, which was co-issued in December 2016 by the former Trademark Office and former Trademark Review and Adjudication Board, (1) several trademarks have been applied for registration by the disputed trademark’s applicant, also, identical with or similar to others’ trademark with strong distinctiveness; (2) several trademarks have been applied for registration by the disputed trademark’s applicant, also, identical with or similar to composition of specific names, packages or decorations of other’s names, enterprises name, names of social organizations and other institutions, or well-known goods. (3) several trademarks have been applied for registration in large-scale by the disputed trademark’s applicant, also, lack of obvious intention for the real use; (4) registration can be recognized to obtain through improper method. 

Based on regulations above, we have proved respondent’s application has constituted situation of “obtaining the registration by means of improper methods” from following aspects: 

Firstly, the respondent has intensively applied for more than 350 trademarks between 2016 and 2019, also, the applied-for trademarks have involved in several goods/services classes, they are far more than the scope that demanded by the normal operation, obviously, the respondent is lack of intention for the real use, it is more likely to hoard trademarks. 

Secondly, the respondent has applied for many trademarks, i.e. “嬴政”(Ying Zheng in Pinyin); “刘邦” (Liu Bang in Pinyin);“忽必烈” (Hu Bi Lie in Pinyin);“唐太宗” (Tang Tai Zong in Pinyin); “钱学森” (Qian Xue Sen in Pinyin);“马化腾” （Ma Hua Teng in Pinyin）;“王健林” (Wang Jian Lin in Pinyin)；“王思聪” (Wang Si Song in Pinyin);“米老鼠” (Mi Lao Shu in Pinyin);“唐老鸭” （Tang Lao Ya in Pinyin）;“嘉峪关”(Jia Yu Guan in Pinyin);“八达岭长城” (Ba Da Ling in Pinyin) and“金拱门”(Jin Gong Men in Pinyin), those are similar with or identical to others’ name, famous cartoon figures, names of scenic spots, as well as trademarks with strong distinctiveness. 

Thirdly, China National Intellectual Property Administration has clearly recognized that, in the judgement regarding invalidation of several trademarks, the respondent’s registrations are lack of obvious intention for real use, also, disturbed the normal order of trademarks’ registration, furthermore, it has constituted the status “obtaining the registration by the means of other improper methods” that was described by Article 44-1 of Chinese Trademark Law. 

Combining the grounds and facts above, we actively searched the respondent’s behaviors related to malicious registering action and hoarding trademarks, the disputed trademark has been successfully invalided by use of Article 44-1 of Chinese Trademark Law, furthermore, the client’s trademark has gained the protection. 

In conclusion, Article 44-1 of Chinese Trademark Law aims to prevent the violation of the principle of good faith, to prevent behaviors to disturb the order of trademark registration, improper competitive behaviors to damage the fair competition market order and malicious registering actions. Also, article 44-1 is a powerful weapon to protect right holders’ legal interests.