1. Reasonable trademark application time to avoid trademark squatting

Many companies, in order to prepare for product launch, will conduct a series of publicity activities in advance, which may be Media reports, it may be outdoor advertising, or it may be through new media such as Weibo to make the upcoming products public. At this time, our trademark application has not yet been submitted. This may lead to trademark squatting. Jack Ma, the former CEO of Alibaba Group, turned his attention to the logistics industry after resigning as CEO. It was announced on May 28, 2013 that it jointly founded the China Intelligent Logistics Backbone Network (CSN) project with a number of companies and named the project "Rookie" Logistics. As soon as the news was announced, a company registered in Hong Kong submitted a Class 39 (Logistics) "Cainiao" trademark application to the Trademark Office on May 29, 2013. The author can't help but sigh at its high trademark sensitivity and quick registration time. However, Jack Ma was one step ahead and submitted this trademark application to the Trademark Office on May 23, 2013, before the information conference, thus avoiding the risk of trademark preemption. It can be seen from this that companies should keep their trademarks confidential before the products are launched on the market and apply for trademarks before the products are launched on the market to avoid the risk of infringement caused by trademark squatting.

2. Before applying for a trademark, evaluate the prospects for authorization to reduce the impact of failure to authorize the trademark.

First, confirm whether there is a prior identical trademark. The mobile application software "Grapefruit Menstrual Assistant" was officially launched in April 2013. According to the data released in September of that year, its total number of users has reached 10 million, with daily active users exceeding 1 million. The number of users is expected to exceed 1 million by the end of the year. 20 million. However, it did not apply for the "Grapefruit" trademark in Category 9 (Software). The trademark had already been registered by another company on March 14, 2012. Due to suspected trademark infringement, the "Xiyu" software was removed from the shelves of many software download platforms, causing huge losses to the company. The company eventually had to upgrade the product name to "Meiyou". In order to avoid such infringement, you can check the prior rights to confirm whether the trademark has been registered by others. If the same trademark has been registered by others, the company should consider planning a new brand as soon as possible to avoid being sued for infringement after the product is launched and reduce unnecessary losses.

Second, confirm whether there is a prior similar trademark. After inquiring about prior rights and eliminating conflicts of prior identical rights, companies need to consider whether there are prior similar trademarks. If so, can the trademark be authorized? Is there any risk of being sued for infringement during the trademark application process? At the Evergrande AFC Champions League victory celebration on the evening of November 9, 2013, the product of "Evergrande Ice Spring" was officially unveiled. The product is positioned in the high-end water market. It submitted a trademark application to the Trademark Office on October 22, 2013. Since then, Guangzhou Evergrande Group has invested heavily in promoting the new brand, which has rapidly increased its brand awareness. At this time, Guangzhou Evergrande was sued for trademark infringement, and Jiangxi Evergrande sued it for infringement of its registered Class 32 (mineral water) "Hengda" trademark. Although Guangzhou Evergrande denies the infringement, the case is under trial. However, from the trademark analysis, the distinctive part of the "Hengda Bingquan" trademark is "Hengda", while "Bingquan" is a generic name with weak distinctiveness, and the overall trademarks are relatively similar. During the trademark review stage, it is still unclear whether “Hengda Ice Spring” can pass the review. Even if the trademark is successfully registered, there is still the possibility of opposition from the other party. The road to trademark authorization for "Evergrande Ice Spring" may be quite bumpy. Before the product is launched on the market, if a company inquires about a prior similar trademark and it is evaluated that it may affect the authorization of the new brand or there is a risk of infringement during the application stage, the company needs to consider whether to continue to use the trademark and balance the pros and cons.

2. After trademark registration, can we sit back and relax?

After the trademark is registered, the enterprise enjoys the exclusive right to use the trademark. At this time, many companies have relaxed their vigilance. Whether things are really what the companies think, they are not. There are still certain risks after trademark registration. As a result, companies may once again fall into the quagmire of trademark infringement.

1. In the face of changes in the commodity classification table, whether to add new trademarks in a timely manner

The classification table for similar goods and services (referred to as the commodity classification table) is an important step in trademark application, product selection, One of the important basis for approximate judgment. Our country’s current classification is based on the 10th edition of the Nice Classification. The Nice Classification is subject to major revisions every five years and minor revisions every year.

Therefore, faced with the ever-changing classification table, enterprises should pay attention to its changes in a timely manner to avoid the risk of trademark infringement caused by changes in the classification table. On the occasion of its IPO, Momo Technology was unexpectedly sued by another company for infringement of its exclusive rights to the "Momo" trademark. Momo Technology Company applied for the Class 9 (Software) "Momo" trademark on September 8, 2011, and the registration was approved on November 14, 2012. Why is the trademark already registered but still being sued for infringement? The respondent’s Class 45 (Dating Service) “Momo” trademark application date was August 6, 2012, and the registration was approved on January 7, 2014. The services approved and registered by the respondent are "dating services, etc." The "dating service" was similar to the services provided by the "Momo" software, so it was sued.

In the newly revised classification table in 2014, a new service "online social network service" was added, which is more consistent with the services provided by the "Momo" software. If Momo Technology had additionally registered the trademark in time, it is very likely that this lawsuit would have been avoided. It is a pity that this service has been registered by another company. If the trademark is successfully registered, Momo Technology may once again be in the dock for trademark infringement. The outcome of the lawsuit is not yet known, but it is likely to affect Momo’s IPO path. Therefore, after a trademark is approved for registration, enterprises must remain vigilant, pay attention to changes in the classification list in a timely manner, and supplement trademark registration in a timely manner to avoid the resulting risk of trademark infringement.

2. Whether trademark monitoring has been done well to avoid preemptive registration by others

Judging from the case of "Momo" being sued, in addition to paying attention to changes in the classification table in a timely manner, In addition to supplementary registration, it also reminds companies that they should do a good job in trademark monitoring. If Momo Technology Company had timely monitored the announcement of Class 45 (Dating Service) "Momo" during the trademark announcement period and filed an objection application in a timely manner, the current passive situation could have been avoided.

As my country’s legal protection environment continues to improve, corporate intellectual property awareness should also increase. Enterprises should do a good job in intellectual property protection so that it can better serve the business operations of the enterprise. Doing a good job in trademark prevention and avoiding trademark infringement lawsuits is also an important part of corporate business competition.