Trademark

“Fodder and provisions should arrive prior to the troops” – An important lecture to businesses

At two o’clock on the 20th July, 2018, an uninvited guest made an appearance at a wonton shop located at Huangpu district, Shanghai.

The uninvited guest asserted, “I have耳光餛飩 (Yi Kwong Wonton)’s trademark. Let’s have a chat.”

The boss questioned. “What is there to talk about?”

“Since I have to trademark, I give you two choices. You can either sell me your wonton shop, which I will give you 5 million dollars in return; or you can purchase the trademark from me for 10 million dollars. If you are discontent about the amount, I will turn your shop into a franchise, and each year’s franchise fees would greatly exceed 10 million dollars.”

Watching this scene is indeed heartrending. 耳光餛飩Yi Kwong Wonton is a wonton shop established by Pan Nanyun and his sister since the 1997. They have gone through all the blood, sweat and tears to operate this shop. Throughout the years, many celebrities paid visits to the shop and it earned the title as one of the most famous restaurants in Shanghai. Since the shop was operating without any trademark protection, AIUSH INVESTMENT HOLDING CO. LIMITED took advantage of this, and registered the “耳光”trademark under the 43th class on the 29th October, 2012. In addition, AIUSH INVESTMENT CO. LIMITED registered trademarks similar to 耳光餛飩 in the past 2 years, after consultation with bkip.

Due to the principle of trademark registration, the above scenario happens on a daily basis. What should we do when we are the victim of trademark squatting?

 

01

For trademarks during the announcement period, an objection can be filed

 

After making an application for a trademark and passing the examination, there will be a fixed period of a three-month announcement period. One can file an objection within this period. (A reminder from bkip: at the same time, please remember to file an application for the trademark). According to Section 32 of the Trademark Law of the People’s Republic of China, an application for a trademark cannot undermine one’s prior privilege. Section 33 of the Act states: For the trademarks under preliminary examination and announcement, the prior rights holders and interested parties may file objections to the Trademark Office within three months from the date of the announcement if they deem there is a violation of Section 13 subsection 2 and 3, Section 15, Section 16 subsection 1, Section 30, Section 31 and Section 32 of the Act; for the general public, the may file objections if they deem the there is a violation of Section 10, Section 11 and Section 12 of the Act.

 

02

For registered trademarks, they can be declared invalid or revoked for three consecutive years without use

 

Registered trademarks can be declared invalid or revoked for three consecutive years without use. However, one should bear in mind that there is a 5 years time limit (except for well-known trademarks). This is illustrated by Section 45 of the Trademark Law of the People’s Republic of China: The prior right holder or interested party may request the Trademark Review and Adjudication Board to declare the registered trademark invalid when they violated Section 13 subsection 3, Section 15, Section 16 subsection 1, Section 30, Section 31 of the Act, within five years from the date of registration of the trademark. The five year time limit does not apply to malicious registrations. After consultation with bkip, the above said “耳光”trademark is now going through a trademark invalidation process after three consecutive years without use. We are looking forward to a desirable outcome.

Trademarks are market permits. In order to avoid trademark squatting, the best way is to keep the registration work confidential and to apply for a trademark registration as soon as possible. It is not worth it to lose your beloved trademark due to your negligence and purchasing the trademark from others at a significantly high price. Nevertheless, multi-category defense protection is essential, comprehensive layout should be done in advance to win the brand strategy.

Shenzhen Benny Kong Intellectual Property Agent Ltd specialises in multinational trademark registrations, transfer of trademarks, complicated cases regarding trademarks, focuses in the field of trademarks and dedicated to act for business wholeheartedly.

Related Posts