This article is about the protection of national sovereign signs, deceptive judgments, distinctive judgments, well-known trademark protection, and the consequences of malicious hoarding of trademarks in China’s trademark protection legal system, and from the perspective of judicial practice, it systematically analyzes the hotspots and difficulties of corporate trademark protection practices.

Q: Does it constitute the same or similar to the state name of China referred to in Article 10(1)(1) of the Trademark Law As long as the logo contains "China"?

If a trademark sign contains the name of the People's Republic of China, but is not the same or similar as a whole, it does not constitute the situation referred to in Article 10(1)(1) of the Trademark Law. If the registration of the sign as a trademark may damage the dignity of the country, it may constitute the situation stipulated in Article 10(1)(8) of the Trademark Law.

Q: What is the influence of the coexistence agreement on the registration of a trademark?

When determining whether the trademark in dispute and the cited trademark constitute similar trademarks, the coexistence agreement can be regarded as the preliminary evidence to eliminate confusion. Where the cited trademark and the trademark in dispute have the same or substantially the same trademark signs and are used for the same or similar commodities, the application for registration of the trademark in dispute cannot be approved only on the basis of the coexistence agreement.

Q: What are the situations in which three-dimensional trademarks in the shape of goods are not allowed to be registered?

In accordance with the provisions of Article 12 of the Trademark Law, an application for registration of a trademark with a three-dimensional sign shall not be registered if the shape generated only by the nature of the product itself, the shape of the product is required to obtain technical effects, or the shape that gives the product substantial value.

Same with a two-dimensional mark, to apply for a registered trademark with a three-dimensional mark, the distinctive feature is required for people to distinguish the goods and services of different producers and operators through the mark. For the particularity of three-dimensional signs, this provision specifically stipulates some cases of three-dimensional signs that are not distinctive and cannot be registered as trademarks.

First, the shape that generated solely from the properties of the commodity itself. The so-called shape produced by the properties of the commodity itself refers to the shape that must be adopted or usually adopted in order to realize the inherent function and purpose of the commodity, for example, the shape of a book and the shape of a general light bulb. The trademark based on the shape produced only by the nature of the commodity itself lacks distinctiveness, and consumers cannot distinguish the commodities of different producers and operators through the trademark. At the same time, if the shape only generated by the nature of the commodity is registered as a trademark, it will cause the exclusive use of the trademark registrant, which is unfair to other producers and operators of similar commodities.

Second, the shape of the commodity required to obtain a technical effect. The so-called commodity shape required to obtain a technical effect refers to the shape necessary for making the product have a specific function, or making the inherent function of the product more easily into reality, such as the shape of an electric shaver, the shape of a power plug. If the shape of the commodity required to obtain technical effects is used as a trademark, not only the trademark lacks distinctiveness, making consumers cannot distinguish the goods of different producers and operators through the trademark, and the promotion and application of this technology will be hindered due to exclusive use.

Third, the shape that makes the commodity have substantial value. The so-called shape that makes a commodity have substantial value refers to the shape used to make the appearance and shape of the commodity affect the value of the commodity, just as the shape of porcelain ornaments and jewelry. The shape that makes the commodity have substantial value is designed for achieving a certain value, not designed to make consumers distinguish different producers and operators, and it has no function of a trademark.

Q: How to determine malicious intent in "punitive damages"?

In practice, the situations in which defendant may be deemed to be malicious are as follows: (1) where after the effective judgment is made, the defendant or its controlling shareholder, legal representative, etc., repeatedly or repeatedly in disguise commits the same infringement or unfair competition behavior; (2) where after being repeatedly warned or being punished by the administrative authority, the defendant or its controlling shareholder, legal representative, etc. continued to commit infringement or unfair competition; (3) counterfeiting the plaintiff's registered trademark (4) clinging to the plaintiff well-known trademark reputation, squatting the plaintiff's well-known trademark; (5) where the defendant uses the plaintiff's well-known trademark on the same or similar commodities; (6) where the plaintiff and the defendant have labor, service relationship, or the relationship of agency, licensing, distribution, cooperation, etc. , or there’s a negotiation, the defendant knew that the intellectual property rights of others existed; (7) where the defendant covers up the accused behavior, forges or destroys the infringement evidence, etc.; (8)where the defendant refuses to perform the behavior preservation ruling; (9) other circumstances with malicious intentions of defendants.

Q: if "punitive damages" are applied, how to determine "serious circumstances" determined in a trademark infringement case?

In reality, if there’s one of the following circumstances, it may be determined that the infringement of trademark rights is serious: (1) the occupation is entirely based on infringement; (2) the accused act lasts for a long time; (3) a wide range of areas for the accused act ; (4) huge amount of profits from infringement; (5) the accused act violates laws and regulations on food, medicine, medical treatment, health, environmental protection and other laws and regulations at the same time, which may endanger personal safety, damage environmental resources or seriously damage public interests; (6) other serious circumstances.

From Beijing Intellectual Property Court

May 10th, 2022