During the Northern Song Dynasty, the "White Rabbit" trademark used by the Liu Family "Kung Fu Needle" shop in Jinan, Shandong Province, which specialized in manufacturing fine needles, had both a graphic and the words "Rabbit is the mark". It is the earliest trademark discovered so far in our country. The biggest role of trademarks in the market economy is brand recognition. Therefore, we find that even slightly more mature startups have their own logos, but there are also legal risks behind trademarks. Entrepreneurs, do you know?
Case 1: Be cautious when determining trademarks
Company A mainly deals in imported goods from the United States. In order to reflect its business characteristics, they added the stars and stripes of the American flag when designing the graphic trademark and submitted a request to the Trademark Office. Trademark registration application. Subsequently, Company A began to use the trademark and conducted a large number of advertising promotions. Unexpectedly, one year later, the company received a "Notice of Trademark Rejection" from the Trademark Office, stating that the trademark they applied for could not be registered. The company consulted a lawyer, who informed him that the trademark violated the relevant provisions of the Trademark Law and that it would be difficult to pass the review. In the end, Company A had no choice but to accept the fact that the trademark could not be registered, and all the early promotion efforts and established brand benefits were in vain.
Suggestion: The "Trademark Law" specifically stipulates the circumstances that cannot be used as trademarks or cannot be registered as trademarks, such as our country's national flag, national emblem, military flag, medals, etc., as well as foreign country names, national flags, National emblems, names and signs of intergovernmental international organizations, etc., and some signs that are deceptive, easy to cause misunderstanding, harmful to socialist morals or have other adverse effects cannot be transferred and used as trademarks. There are also some trademarks that cannot be registered due to lack of distinctiveness. In addition, applying for a registered trademark cannot conflict with other people’s previously acquired legal rights. For example, prior similar trademarks, appearance patents, corporate trade names, copyrights, and name rights may all become obstacles to trademark registration.
Enterprises should have a certain understanding of these regulations. When choosing a trademark, it is better to consult professionals and conduct a comprehensive search. Many companies pay more attention to brand concept design and marketing promotion in the early stage, and ignore the legal aspects of trademarks. They think that it is enough to leave the trademark design to an agency to apply. It takes more than a year from application to formal registration of a trademark. If the trademark cannot be registered because it violates the relevant provisions of the Trademark Law, the company's early investment in promoting the trademark will be wasted, and it is likely to lose good development opportunities.
Case 2: Be careful with the logo you bought from Taobao
Company B wanted to design a company logo, so it found a trademark design shop on Taobao, which provided several designs for it. Pattern selection, Company B chose a pattern they thought was good.
Company B applied for registration of the pattern to the Trademark Office. One year later, they also received a "Notice of Trademark Rejection". The reason for rejection was that it was similar to a previously registered trademark. They discovered that the previously registered trademark was exactly the same as the design they applied for. It turns out that Taobao’s design store steals patterns from the Internet for buyers to choose from.
Suggestion: There are many logo design shops on Taobao now, and the competition is fierce, which reduces the design cost of enterprises. This is originally a good thing, but enterprises should also pay attention to the risks involved.
It is better to have a preliminary idea of ??the trademark logo yourself, and then ask a design company to design it based on this, and avoid using ready-made works by the design company. At the same time, a design entrustment contract must be signed with a design company. In the contract, it is important to stipulate the ownership of the copyright of the design plan, the inability of the work to infringe the copyright of others, and legal responsibilities. Before the formal application, a similar search for the logo must also be conducted to reduce the risk of trademark being used. Legal risks of rejection.
Case 3 Trademark application to prevent leakage
Company C conceived a good word trademark. In order to ensure successful registration, they consulted a trademark agency and asked them to check the similarity of the trademark on their behalf. situation, but in the end they chose another agency to apply for registration on their behalf due to cost issues. Later, their trademarks were also rejected because of similarity. However, the previous similar trademark was exactly the same as theirs, and the application date was only one day earlier than theirs.
Company C only disclosed the trademark situation to this trademark agency before formally filing the application. They also learned that this agency is a company that specializes in trademark squatting and specializes in squatting on popular trademarks in society.
Soon after, the holder of the cited trademark sent a warning letter to Company C, requiring them to stop using the trademark, otherwise they would file a trademark infringement lawsuit in court. Another solution is for Company C to purchase the trademark at a high price.
Recommendation: Keep confidentiality during the trademark conception stage, and entrust an honest and reliable trademark agency or law firm. In addition to trademark agencies, the company's internal employees, partners, shareholders, and competitors may squat on leaked trademarks. In particular, there are a large number of "professional trademark squatters" who pay special attention to the brand information of some companies. , once it is confirmed that the company's brand has not applied for a trademark, they will rush to register it and then negotiate terms with the company. Some companies strictly abide by the principle of not publishing without applying, and publish their trademarks only after receiving the acceptance notice from the Trademark Office. This is a very good practice.
Case 4: There may be no lower limit for trademark agencies
Company D wanted to apply for a trademark, so it found several trademark agencies for price inquiry and comparison, and selected the one with the lowest trademark price through the website. company. Not long after the trademark application, Company D received the "Notice of Acceptance of Trademark Registration Application" from the agency, informing them that the trademark could now be used and that the official trademark registration certificate would be issued two years later.
Company D started using the trademark and waited for three years. The trademark registration certificate had not yet been issued, so he called the agency and found that the agency’s phone number could not be reached and the website had disappeared. They quickly went to the Trademark Office to check their trademarks and were told that their trademark registration application had not been submitted at all and that the "Notice of Acceptance of Trademark Registration Application" in their hands was forged. Only then did they realize that they had been fooled, and quickly applied for a registered trademark. However, similar trademarks had been applied for before them in the past two years, and everything was irreversible.
Suggestion: Many people cannot tell the difference between the acceptance notice and the trademark registration certificate. Some unscrupulous agencies also take advantage of this situation to deceive, claiming that the acceptance notice is a trademark registration certificate. The situation of forged acceptance notices is even more heinous, as they did not apply at all. Scammers take advantage of companies' greed for cheap and deceive you at low prices. This has also happened on Taobao recently. A thousand yuan is a small thing, but it delays the development opportunities of the enterprise.
In order to prevent this from happening, companies must not only find reliable agents as mentioned above, but also learn to identify forged acceptance notices. Information on trademark applications can be queried on the Trademark Office’s website. If the acceptance notice is forged, it will definitely not be queried online.
Case 5: The double-act trap of an unscrupulous agency
Company E is a small company. Last year, it entrusted a trademark agency to apply for a trademark, and it just got the trademark certificate this year. . One day, the boss of Company F received a call from out of town, saying that Company F was very interested in the trademark and wanted to buy it for 50,000 yuan. When the company owner heard about it, he didn't expect that his trademark could still be sold for so much money. Since the trademark was still in use, he didn't consider selling it.
A few days later, the person called again and said that this trademark was very important to them and could be purchased for 100,000 yuan. If it was not sold, they would register all categories and then sue Company F. infringement. Company F panicked upon hearing this. "It just happened" that the original trademark agency called and asked about the company's trademark. The boss quickly told the agency about the matter.
The agency said that your trademark is now very valuable and should be protected in all categories. Apply for all 45 categories as soon as possible so that others cannot preemptively register it. The boss thought that his trademark was so valuable, and it would be even more valuable if more registrations were made, so he decided to spend tens of thousands more yuan to apply for full-class registration.
Suggestion: This kind of fraud in the case is not a minority, but very common. Anyone who has applied for a trademark will have received calls from scammers, and many people have been deceived.
Of course, applying for full-class registration is not a bad thing from some perspectives, as it can protect enterprises more. However, in many cases, companies do not need such a large-scale protection at all. Under the instigation and deception of scammers, some individual industrial and commercial households even applied for full-scale registration. Regarding this kind of scandal, in addition to companies themselves having to keep their eyes open and not to be coerced or lured by scammers, government law enforcement agencies also need to step up crackdowns and investigations. Anyone who violates criminal laws must be severely punished. At the same time, agencies involved in fraud must also be punished. It is necessary to strictly investigate and deal with them, strengthen credit supervision, publish their records of dishonesty, and include them in the blacklist of agencies.
Case 6: Manage professional managers well and clarify trademark ownership
Company F is a large food company run by a well-known professional manager, Mr. R. The company launched a functional food and used the W trademark on the food. The company invested a huge amount of money in advertising this food, which quickly made it a household name and occupied a large market share.
After some time, Mr. R, a professional manager, left the company due to disagreements with the company's major shareholders. During the handover, the company discovered that the W trademark of the company's best-selling product was actually registered in Mr. R's name. Mr. R’s explanation is that the brand was created and cultivated by him, and the W trademark is his intellectual property. If the company wants to continue to use it, it must pay him a huge trademark royalty every year. The company was furious and took Mr. R to court, but the evidence presented by Mr. R in court proved that the W trademark was applied for by Company D before its establishment. In the end, Company F had no choice but to pay Mr. R a fee to purchase the W trademark under the company’s name.
Suggestion: This is a real case, and the development and outcome of the actual situation are far more complicated than what is shown in the article. In this case, we just want to point out that the owner of a company must pay attention to the company's brand, especially the ownership of the trademark. Nowadays, it is more and more common for enterprises to hire professional managers, which is a good phenomenon. However, while delegating power, business owners cannot “spread too much”.
Trademark rights are not as sensitive as equity and company property, but their potential economic benefits are very large. Business owners often don't pay enough attention and wait until it's too late to regret something goes wrong. Therefore, enterprises must pay attention to the internal management of intellectual property rights, regularly organize the enterprise's intellectual property rights, discover problems, and solve them in a timely manner. If in this case, the company owner had discovered the registration status of the brand trademark in time and corrected it, the subsequent problems would not have occurred.
Case 7: Beware of Fraud in Trademark Transfer
In order to meet the requirements for opening a store on Tmall Mall, Company H was eager to purchase an already registered trademark. They searched for a trademark through an idle trademark trading website, which they thought was very good and consistent with their company's positioning. They found the trademark seller, and finally the two parties settled the transaction for 100,000 yuan and completed the trademark transfer procedures.
H company used this trademark to successfully open a store on Tmall Mall and began publicity and promotion. But soon they received a letter from a lawyer from the original trademark owner, asking them to stop the trademark on the grounds that the trademark had never been transferred. They immediately contacted the trademark seller and found that the seller could no longer be contacted. It turns out that the seller is not the real trademark owner at all, but a professional trademark liar who uses forged documents and procedures to commit trademark transfer fraud. In the end, the original trademark owner took back the trademark through legal means, and Company H suffered huge losses.
Suggestion: Due to Tmall Mall’s requirement for registered trademarks, trademark transfers became popular overnight, which relieved major trademark hoarders, and some fraudsters also saw opportunities. In the past, there were some fraudulent behaviors in the trademark transfer process, mainly the means used by shareholders or stakeholders to compete for specific trademarks. The current situation is that scammers directly sell other people's trademarks. Some "smart" scammers even check the company's revocation or cancellation information, go to the Trademark Office to search for the trademarks in their names according to the list, and then forge official seal materials to commit transfer fraud.
In order to avoid this kind of trademark transfer fraud, entrepreneurs must do their homework before transferring. For promising trademarks, we should focus on examining the true status of their rights. For example, search the trademark seller's corporate credit status on the Industrial and Commercial Bureau's corporate credit website, and carefully check the original price of the trademark certificate instead of a copy or scanned copy. Also pay attention to the origin of the trademark, and be more careful about trademarks on some non-standard trademark trading websites.
Case 8: Brand franchising is full of scams
Little I started a business and opened a restaurant, but it never became popular, so he thought of brand franchising. He found a fast food chain with a very foreign name on the Internet that he could join. After several phone calls and on-site visits to the headquarters, he decided to join this chain brand. They signed a brand franchise agreement, and Xiao I paid tens of thousands of yuan in brand franchise fees.
The business of the fast food restaurant was good for a few months after it was opened, but suddenly one day the industrial and commercial law enforcement officers came to tell Xiao I that he had infringed the trademark rights of another famous fast food chain store and that he should immediately stop using the trademark and accept punishment.
Xiao I showed the law enforcement officer the brand franchise agreement he signed. The law enforcement officer told him: the brand trademark in this agreement imitates a famous fast food brand and has not been registered at all. There is only a "Notice of Acceptance of Trademark Registration Application".
Suggestion: The trademark acceptance notice is the acceptance certificate issued by the Trademark Office to the trademark applicant after the trademark registration application is submitted. It is not the same thing as the trademark registration certificate. Replacing (or impersonating) the trademark registration certificate with a trademark acceptance notice is very common in brand franchise fraud. The brand owner has a great trademark that may not be registered at all. They don't care whether it can be registered. As long as they get the acceptance notice, they can start licensing it out.
Although the law does not prohibit the licensing of trademarks under application, that is, unregistered trademarks can be licensed to others and charged licensing fees, but the rights of unregistered trademarks are undetermined. It may be rejected in the first instance. On the other hand, it may also constitute infringement of other trademark owners.
In order to prevent being deceived during the brand franchise process, it is recommended that the brand owner obtain a trademark registration certificate as a hard condition when inspecting the brand franchise project. Otherwise, try not to take risks, and at the same time, examine the true strength of the brand owner. Don't listen to the lies of brand owners. In addition to visiting their designated flagship stores, you should also conduct on-site inspections of the operations of other franchisees.
Case 9: Brand Legal Risks in Company Acquisition
In order to expand its business, Company G wanted to acquire Company Q in a certain province. Company Q mainly sells a girl’s accessories brand, which has a national reputation. Hundreds of specialty stores. In the end, Company G purchased most of the shares of Company Q at a high price and began national brand promotion, inviting an idol female singer from Taiwan as its image spokesperson.
Soon, Company G received a summons from the court. They were sued by a clothing company from another province for trademark infringement. At this time, Company G asked a lawyer to search the trademark status of Company Q, and found that all the trademark registration applications for the brands operated by the company had been rejected by the Trademark Office and were invalid. The previously registered trademark belonged to this clothing company from another province. The first instance of this case has ruled that Company G and its affiliated companies have infringed their trademarks and compensated the other parties for losses of 30 million yuan. The second instance is in progress.
Suggestion: There are many disputes about trademark rights in company acquisitions and mergers. Generally, it is because the true ownership status of the trademark rights is not investigated before the merger and acquisition, and people think that they have bought the brand by buying the equity of the company. In fact, the company The trademark is registered in the name of a third party, and the third party is an independent corporate legal person, causing later disputes.
This case is also different from the above situation in that the acquirer did not carefully examine the registration status of the acquired party’s main trademark. In fact, when the acquisition was carried out, the main trademark of the acquired company was still unregistered, and there were very similar previously registered trademarks in the same category. The main trademark of the acquired company could not be registered at all. As long as the buyer's lawyer does a trademark search, such low-level mistakes will be avoided. During the company acquisition process, especially when the corporate brand equity is very important, trademark investigation must be done well.
Conclusion
The legal risks in trademark matters are far more than the above 9 types. These problems include technical problems and social and moral issues, but after all, companies themselves need to pay attention to the legal aspects of the brand (trademark). The bigger the entrepreneur becomes, the more important the legal foundation of the corporate brand becomes. There are major hidden risks in corporate brands. The bigger the company develops, the greater the losses it will eventually suffer. Entrepreneurs must pay attention to this.