Protection Measures for Well-Known Trademarks

As for the protection of well-known trademarks, Article 6-2 of the Paris Convention stipulates: For at least five years from the date of registration, filings shall be allowed. The requirements for the cancellation of such a mark and the period within which prohibition of use may be proposed may be determined by each Member State of the Union. ?There should be no time limit for requests to cancel registration or prohibit use of a trademark that has been registered and used by dishonest means. ?According to this provision, if the registration was not obtained by deception, nor was it used for deceptive purposes, then the owner of a well-known trademark can only cancel its registration if it disputes its registration within 5 years of its registration. If the dispute is filed after 5 years , it can no longer be revoked. It can be seen that this also protects the rights and interests of other trademark owners. However, if it is used by deceptive means or for deceptive purposes, the well-known trademark will be revoked no matter when the owner files an objection. Article 16, paragraph 2, of the TRIPS Agreement also provides the same provision, and extends the protection of well-known trademarks under the Paris Convention only to commodity trademarks to include service trademarks.

Article 41, Paragraph 2, of my country’s new Trademark Law stipulates: If a registered trademark violates the provisions of Articles 13, 15, 16, and 31 of this Law, it shall be deregistered from the Trademark Law. Within 5 years from the date of registration, the trademark owner or interested party may request the Trademark Review and Adjudication Board to cancel the registered trademark. For cases registered in bad faith, the owner of a well-known trademark is not subject to the 5-year time limit. ?It can be seen that the protection given to well-known trademarks by my country's new "Trademark Law" can be said to be fully consistent with the requirements of the Paris Convention and the TRIPS Agreement. The protection given to well-known trademarks is different from that of general trademarks. For malicious registration of well-known trademarks, the owner of the well-known trademark will not be subject to There is a five-year time limit, while ordinary trademarks will be subject to a five-year time limit.

In addition, my country's new "Trademark Law" also stipulates that "reverse counterfeiting" of trademarks is prohibited, and "reverse counterfeiting" is regarded as an infringement of trademark rights. This provision is conducive to banning some foreign trademarks. The reverse counterfeiting of my country's well-known trademarks by enterprises has created good prerequisites for Chinese enterprises to create internationally renowned brands. In addition, the new Trademark Law also empowers the industrial and commercial administrative departments to investigate and collect evidence, strengthen the investigation and punishment of trademark violations, and empowers trademark owners to apply to the People's Court for an order to stop the infringement before filing a lawsuit when they discover infringement. Property preservation measures, all of which are also conducive to the protection of well-known trademarks.

However, my country's Trademark Law still has shortcomings, such as the lack of provisions on the dilution of well-known trademarks. Dilution is an infringement that can lead to confusion about the source of goods, allowing the infringer to take advantage of the reputation of others' trademarks, directly weakening the promotional role of well-known trademarks and weakening the role of trademarks in proving product quality, thereby infringing on consumers' rights. Legitimate interests. Therefore, the author believes that the following measures should be taken to protect well-known trademarks:

1. Define dilution as trademark infringement.

2. Persons other than the owner of a well-known trademark are prohibited from registering a trademark that is identical or similar to a well-known trademark on any product.

3. It is prohibited to register other people’s well-known trademarks as domain names. The difference between well-known trademark protection and ordinary trademark protection

Generally speaking, "Chinese famous brand products" must have trademarks with high market visibility. Similarly, the carrier products of well-known trademarks must have excellent quality and have competitive advantages. Some products, such as Ordos brand cashmere sweaters, are both Chinese famous brand products and have the title of Chinese Well-known Trademark. These two honors also have mutual reference value in the process of mutual recognition.

However, there are obvious differences between China's famous brand products and well-known trademarks in many aspects:

1. The legal basis and enforcement departments of the two are different. The recognition of well-known trademarks in China is based on the "Trademark Law of the People's Republic of China" and the "Trademark Law Implementation Rules" formulated in accordance with this law and the State Administration for Industry and Commerce Order No. 5 "Regulations on the Recognition and Protection of Well-known Trademarks". Enterprises A well-known trademark must apply to the Trademark Office of the Industrial and Commercial Administration Department of the State Council. After it is recognized, it will be a well-known trademark and enjoy all the rights of a well-known trademark. The evaluation of China's famous brand products is based on the "Law of the People's Republic of China and the Quality of Domestic Products" and the "Quality Promotion Outline" formulated by the State Council and Order No. 12 of the General Administration of Quality Supervision, Inspection and Quarantine "Measures for the Administration of China's Famous Brand Products", the General Administration of Quality Supervision, Inspection and Quarantine of the People's Republic of China Authorize the China Famous Brand Strategy Promotion Committee to uniformly organize and implement the evaluation work of China's famous brand products.

2. The two have different connotations. Well-known trademarks refer to trademarks that are widely known to the relevant public in China and enjoy a high reputation. Chinese famous brand products refer to products whose physical quality has reached the advanced level of similar international products, is in a leading position among similar domestic products, has market share and popularity at the forefront of the industry, has high user satisfaction, and has strong market competitiveness. It can be seen from this that the connotation of a well-known trademark is a trademark, while the connotation of a famous brand product is a specific product.

3. The objects of the two are different. The recognition objects of well-known trademarks include both registered trademarks of domestic enterprises and trademarks registered in China by foreign enterprises. The evaluation of famous brand products is limited to products of Chinese enterprises, and applications for products using foreign (overseas) trademarks will not be accepted.

4. The evaluation mechanisms of the two are different. According to the newly issued "Measures for the Recognition and Review of Well-known Trademarks" issued by the State Administration for Industry and Commerce, well-known trademarks will transform from an honor for enterprises into a means of legal protection, and will no longer be subject to batch evaluation and recognition organized by the state. The introduction of this new regulation means that the history of batch assessment of well-known trademarks has become a thing of the past. The "Measures for the Administration of Chinese Famous Brand Products" stipulates that the evaluation of Chinese famous brand products shall be conducted once a year, and the China Famous Brand Strategy Promotion Committee shall publish a product catalog for the evaluation of Chinese famous brand products every year. Applications for products that are not in the evaluation catalog for that year will not be accepted.

5. The identification conditions of the two are different. The components of a well-known trademark are: relevant materials about the trademark’s registration history and scope of use; relevant materials about the trademark’s publicity and promotional activities, geographical scope, types of publicity media, and the amount of advertising; the trademark’s popularity in China or Past record materials of being protected as a well-known trademark in other countries or regions; relevant materials such as the output, sales volume, sales revenue, profits and taxes, and sales area range of the goods using the trademark in the past three years. The evaluation of China's famous brand products focuses on: physical quality level; market share, export exchange rate, brand awareness, annual sales, realized profits and taxes, industrial cost profit rate, total asset contribution rate; the company's production technology conditions and technical equipment , technological innovation, product development capabilities; the standard level of product implementation; the company's measurement and testing system, measurement assurance capabilities, quality management system; the company's after-sales service system and customer satisfaction and other indicators must be at the forefront of the entire industry.

6. The consequences of the two identifications are different. After a well-known trademark is confirmed, it can receive greater protection than an ordinary trademark. Recognition of a well-known trademark is a legal protection method for resolving trademark infringement disputes. It adopts the principles of "case-by-case identification" and passive protection. If a product that has obtained a well-known trademark encounters an infringement dispute, the well-known trademark can be submitted to the Trademark Office for arbitration as a protected record. According to the provisions of the "Measures for the Recognition and Review of Well-known Trademarks", apart from infringement disputes, well-known trademarks have no meaning to the enterprise. The evaluation of China's famous brand products is mainly to grant an honor to enterprises and is part of the national reward mechanism. How do companies manage trademark applications

It is now difficult to find companies that implement a single brand strategy, that is, always using only one trademark. More and more companies tend to apply for new trademarks as new products are developed. . To apply for a trademark, you need to pay an application fee of 1,000 yuan to the National Trademark Office and an agency fee to an agency. Blindly applying for too many trademarks will be a financial burden for the company. If an enterprise wants to continuously apply for new trademarks while also reasonably controlling costs, trademark applications need to be managed. The following uses several actual trademarks as examples to introduce how companies manage trademark applications.

1. Management of registration categories

China Intellectual Property News once reported: 82 applications for the "Xizhilang" trademark have been registered in all 45 categories, covering all categories. Among them, Guangdong Xizhilang Group Co., Ltd. (hereinafter referred to as Xizhilang Company) exclusively owns 68 of them. Xizhilang Company's "Xizhilang" jelly (Class 29) trademark is well-known to almost everyone in the country. Guangdong Shantou Qianye Cosmetics Co., Ltd. registered the word trademark "Xizhilang" in shampoo and other product categories (Category 3). In order to compete for the shampoo product category trademark, Xizhilang Company was involved in a long trademark battle. In this trademark battle that spanned nearly 10 years, Xizhilang Company almost exhausted all the means provided by the law, but the third category? Xizhilang Company ?The trademark ended up with Qianye Company.

Trademarks are registered by category, and each category is a trademark.

On the official website of the National Trademark Office, you can see that some companies have registered the same trademark in 45 major categories and all sub-categories. The registration fee and agency fee alone are nearly 100,000 yuan. This kind of registration of all categories is not advisable. In the world, which company can have such strength and diversify to such an extent that the products it produces and the services it provides can cover all 45 categories? Then it cannot be covered. Category, the trademark cannot be used. According to Chinese law, if a trademark is idle for three consecutive years, its registration will be revoked. Xizhilang Company has persisted for ten years and guarded its trademark position unswervingly, which represents a kind of knot of the enterprise. The media believes that if you register the same trademark in other categories, you will face chaos from dissidents, which represents the public's concerns. However, this kind of confusion between companies and the public's concerns is wrong. An enterprise can only register in the categories related to the products it produces and the services it provides. If the development of the enterprise is considered, and the product or service may be extended upstream and downstream, it can be considered in the product or service category that may be extended. Just register. Do not blindly expand the registration category. If you register but cannot use it and it is revoked, the registration fee will be wasted.

2. Management of registered sub-categories

There are a total of 45 major categories of trademarks, and each major category has many sub-categories. Our country's law stipulates that a trademark can be registered in 10 sub-categories in one major category at the same time. The cost of registering one sub-category is the same as that of 10 sub-categories. This is the legal rule of buying 1 and getting 9 free. Buying 10 for the price of 1 is certainly economical. Some companies only want to register in small categories related to the company's products or services, and do not appreciate the statutory gifts. In reality, many companies only register one or two sub-categories at first, and later want to register more sub-categories. At this time, they can only apply again with a new trademark and pay another fee. For example, a certain company's overseas trademark was registered in Category 5 successively. The first time it was registered in only one sub-category, and then in three more sub-categories in the same category, the registration cost doubled.

3. Combination trademark application management

Corporate trademarks are becoming increasingly diversified, consisting of pure Chinese elements, and gradually adding graphics and letters. More and more companies have their main trademarks composed of Chinese text, graphics, and English (including pinyin) constitute a combined trademark. During the review process of a combination trademark, the Trademark Office generally examines each element separately. If an element is identical or similar to a previously registered trademark, it may be rejected. In practice, many companies will change their trademarks on their own during the use of trademarks. This situation is legally called alteration. Common alterations include: reducing elements, or changing the combination of elements, and Chinese is most easily used by changing fonts. , or change the arrangement, and use horizontal or vertical arrangement more casually. These changes may lead to the cancellation of the trademark. In order to facilitate registration, the author usually recommends that companies register various elements of a combination trademark separately and use them in combination. If the company really needs to change the way the trademark is combined, it will not be revoked due to trademark alteration.

The main purpose of a trademark is to facilitate consumers to identify, distinguish, and remember. If there are too many trademarks in the same trademark form, it will inevitably increase the difficulty of consumers’ identification and memory. This is very important for establishing a brand image and combating counterfeiting. unfavorable. Therefore, trademarks should be kept in a fixed form as much as possible and should not be changed easily. We call this the "immutability principle". The core part of a combination trademark is Chinese characters. This core part should be fixed, but some companies change it at will. A search on the official website of the State Trademark Office found that Changyu Company has registered 12 trademarks under the category 33 "Changyu" at the same time, as shown in the table below. A "Changyu" uses at least 6 fonts and three arrangement methods. The 12 "Changyu" trademarks use at least 6 combinations, and there are too many graphic elements. So many fonts, including so many graphic elements, and so many combinations, consumers are dazzled and difficult to recognize and remember. When "famous brands" are rampant, the main way of "famous brands" is to imitate the design of famous trademarks, such as the change of the crocodile's mouth to the left or right, the change of the number of Montagut petals, etc., so that consumers can't tell the authenticity. The registration method of Changyu Company's "Changyu" trademark seems to avoid suspicion of trademark alteration, but it creates confusion on its own, increases the difficulty of recognition and memory for consumers, and easily allows counterfeiters and imitators to take advantage of the loopholes. .

To sum up, when applying for a combination trademark, you can apply for each element of the combination separately, but do not change the components easily so that consumers can quickly identify and form memories as soon as possible to prevent malicious imitation of famous brands and counterfeiting. Those who steal the goods and create counterfeit products.

4. Applicant management

Applicant management refers to whose name the trademark is applied for. This does not seem to be a problem. Just apply directly in the name of the company. In reality, the company or Business owners have more to consider. Many business founders hope to apply in their own name (the Trademark Office currently restricts trademark applications in individual names) so that they can take the initiative in future disputes with other shareholders. When an enterprise develops into a group company, which company name should be used to apply for a trademark? This issue seems to have not attracted enough attention from the enterprise. Search the official website of the National Trademark Office using "Changyu" as the keyword from "Applicant Name". Roughly 10 companies related to Changyu (it has not been verified whether they are indeed subsidiaries of Changyu Group) have applied for trademarks,* A total of 269 trademarks were applied for, of which 259 were registered in the name of Yantai Changyu Group Co., Ltd., and the other 9 companies only applied for 10. Although Changyu Group has many entities applying for trademarks, the problem is not outstanding. Among the companies I work for, many corporate trademarks are scattered and registered in various companies in the group, and some problems have already emerged. For example, the group's main trademarks are registered by other subsidiaries according to different categories. The equity structures of these subsidiaries are quite complex. The group wants to consolidate the main trademarks under the group's name, but other subsidiaries are not willing. A group jointly registered its core trademarks, some of which were registered separately by different subsidiaries. The group encountered major obstacles when handling the transfer procedures. The trademarks of an enterprise form a complete system. If the same trademark name is registered in different companies, the integrity of the system will be fragmented, which will easily cause confusion among consumers in the market and increase the cost of recognition and memory for consumers. Is it not conducive to the promotion of the brand and the establishment of an image among consumers? Therefore, when a group enterprise applies for a trademark, it should try to register the trademark under the name of a company, or set up an intangible asset management company to uniformly hold and manage the group's intangible assets. , which requires the transfer of all intangible assets such as trademarks that were originally dispersedly registered in various subsidiaries to the intangible assets management company.

In the era of knowledge economy, intellectual property rights such as trademarks are becoming more and more important to enterprises. The proportion of the company's total assets has gradually exceeded that of tangible assets and has become the company's main asset. Therefore, effective management must be carried out, and trademarks Application is the source, so trademark application management is particularly important.

The above is what the editor has provided for you. How do companies protect trademarks? I hope you like it!