——Commentary on the administrative case of Emerson Electric Company v. Trademark Review and Adjudication Board for trademark objection review

Judgement Summary

Regarding the use of deceptive means discovered during the trademark objection review procedure or other improper means of applying for trademark registration, the provisions of Article 41, Paragraph 1 of the Trademark Law amended in 2001 shall be followed, and the registration shall not be approved.

Introduction to the case

Between September 1994 and January 2009, Emerson Electric Company successively applied to the Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Office) for registration under Article 10, Register the "In-Sink-Erator" trademark, "In-Sink-Erator" trademark, "in sink erator and picture" and other trademarks in categories 21, 1, 7, 8, 9, 11, 16, 17, 20, 28, 40 and other categories (collectively referred to as cited trademarks).

In December 2010, Xiamen Angel Water Spirit Drinking Equipment Co., Ltd. (hereinafter referred to as Angel Company) applied to the Trademark Office to register the trademark No. 8975047 "IN SINK ERATOR and Picture" (hereinafter referred to as the Objected Trademark), designated for use on Class 11 lamps, car lamps, lanterns, hair dryers, electric heaters and other products. During the statutory opposition period, Emerson Electric Company filed an objection with the Trademark Office against the opposed trademark, and the Trademark Office ruled after trial that the opposed trademark should be approved for registration.

During the statutory reexamination period, Emerson Electric Company submitted a reexamination application to the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Review and Adjudication Board). The main reason was that the opposed trademark and the cited trademark constituted similar trademarks. , the registration of the opposed trademark infringed on Emerson Electric Company's prior copyright, and Angel's registration of the opposed trademark was obviously malicious and would disrupt the normal market order. In summary, in accordance with the provisions of the Trademark Law of the People's Republic of China as amended in 2001 (hereinafter referred to as the Trademark Law as amended in 2001), it is requested that the registration of the opposed trademark be disapproved.

On March 24, 2014, the Trademark Review and Adjudication Board issued Trademark Zi [2014] No. 38784 "Review of Trademark Objection No. 8975047 "IN SINK ERATOR and Pictures" (below) (called the sued ruling), it was held that: the goods designated for use by the opposed trademark and all the goods approved for use by the cited trademark were not similar goods, and the opposed trademark and the cited trademark did not constitute similar trademarks used on similar goods. It was ruled that the opposed trademark should be Registration approved.

Emerson Electric Company refused to accept the ruling and filed an administrative lawsuit within the statutory period.

The Beijing No. 1 Intermediate People’s Court held that Paragraph 1 of Article 41 of the 2001 Amendment to the Trademark Law applies to registered trademarks, but the trademark opposed in this case has not yet been approved for registration. This provision stipulates the absolute reasons for prohibiting trademark registration, that is, stipulating issues that harm public order or public interests or hinder the order of trademark registration management. The evidence on record is insufficient to prove that the registration of the opposed trademark violates According to the provisions of Paragraph 1 of Article 41 of the Trademark Law amended in 2001, Emerson Electric Company’s claim based on this provision cannot be established. To sum up, in accordance with the provisions of Article 54, Item (1) of the Administrative Procedure Law of the People's Republic of China that came into effect on October 1, 1990, the verdict was upheld.

After trial, the Beijing Higher People’s Court held that Angel’s large-scale registration violations without actual intention of use violated the principle of good faith, with obvious intention to copy and plagiarize other people’s higher-profile trademarks, disrupting the The normal order of trademark registration management is detrimental to the market order of fair competition, and the application for registration of the opposed trademark should not be approved. Therefore, the Beijing Higher People's Court ruled to revoke the original judgment and the sued ruling, and ordered the Trademark Review and Adjudication Board to make a new ruling.

Judge’s Comment

The focus of this case is: whether Angel’s application to register the opposed trademark constitutes deception as stipulated in Paragraph 1 of Article 41 of the Trademark Law amended in 2001 or other unfair means to obtain trademark registration.

1. Regulations of Trademark Law on “Obtaining Trademark Registration by Improper Means”

Article 41, Paragraph 1 of the Trademark Law amended in 2001 stipulates that the use of deceptive means or other If a trademark registration is obtained through improper means, the Trademark Office shall revoke the registered trademark; other units or individuals may request the Trademark Review and Adjudication Board to rule on revoking the registered trademark. The legislative purpose of this provision is to maintain good trademark registration and management order and create a good trademark market environment. According to the literal provisions of this provision, this provision generally applies to cancellation procedures for registered trademarks, but not to trademark application review procedures. However, if the application for trademark registration by deceptive means or other unfair means is discovered during the trademark application review process, if it is not stopped and the cancellation process is started after the trademark registration process is completed, it will not be conducive to stopping the aforementioned unfairness in a timely manner. Registration behavior. Therefore, the aforementioned legislative spirit should run through the entire process of trademark application review, approval and cancellation. During the trademark application review, approval and corresponding litigation procedures, if it is found that the trademark registration applicant applied for trademark registration by deception or other improper means, the registration may be refused with reference to the aforementioned provisions.

When applying the provisions of Paragraph 1 of Article 41 of the Trademark Law amended in 2001 to examine whether the party's registered trademark behavior violates the provisions of this provision, it must first be judged whether the party's application for trademark registration is deceptive. Trademark registration was obtained by illegal means or other unfair means. Obtaining a trademark application for registration by deception or other improper means is a behavioral requirement for the application of this provision, and this behavioral requirement also objectively reflects the subjective bad faith of the party concerned. At the same time, Article 31 of the Trademark Law amended in 2001 also stipulates that when applying for trademark registration, you must not use improper means to preemptively register a trademark that has been used by others and has a certain influence. This article regulates the behavior of malicious preemptive registration, among which "unfair registration" "Legitimate means" and "preemption" also reflect the bad faith of the applicant for the trademark in dispute.

2. The difference between the two legal provisions

So, what is the difference between "unfair means" and "malice" between these two legal provisions? The author believes that from the perspective of the legal interests or objects of infringement, the objects of "unfair means" and "malicious" infringement in Paragraph 1 of Article 41 of the Trademark Law amended in 2001 are the fair and order of trademark management. Or the interests of the public; and the object of "unfair means" and "malicious" infringement in Article 31 of the Trademark Law amended in 2001 is the legitimate prior rights and interests of others. Precisely because of the different objects of infringement, different factors are considered when making behavioral judgments. For example, when considering “unfair means” and “malice” in Article 31 of the Trademark Law, it is necessary to consider whether the applicant for the trademark in dispute has any business dealings with the prior user; Whether the users are located in the same place or are competitors in the same industry; whether the applicant for the trademark in dispute has ever filed an infringement lawsuit or high trademark transfer fee, license fee or damage compensation against the prior user.

3. The Court’s Determination of the Case

In this case, the cited trademark of Emerson Electric Company is the world’s leading brand of food waste treatment and drinking water purification equipment. It has long been opposed. The trademark already had a high reputation before the date of application. After its extensive use, its popularity in China continues to rise. The evidence on file can prove that Angel Company has no actual intention to use it and has applied for registration of 23 trademarks identical to the cited trademarks in categories 10, 21, 1, 7, 8, 9, 11, 16, 17, 20, 28, 40, etc. It has also applied to register trademarks such as "DJI", "Meilan" and "Focus". Angel's behavior of rushing to register trademarks in large quantities violates the principle of good faith and is an obvious copying and plagiarism of other people's higher-profile trademarks. Deliberately disrupting the normal order of trademark registration management and harming the market order of fair competition. With reference to the provisions of Article 41, Paragraph 1 of the Trademark Law amended in 2001, which prohibits obtaining trademark registration by deception or other unfair means, Angel's preemptive registration behavior should be prohibited, and the application for registration of the opposed trademark should not be rejected. approved. Accordingly, the court of second instance changed the judgment in accordance with the law. (Ma Jun Author's unit: Beijing Higher People's Court)