On June 17th, the China International Trademark Brand Festival held the “2021-2022 Typical Trademark Agency Case Selection Activity" and awarded to the selected ones. The "自卫" invalidation case represented by Chispo has been honored as the "2021-2022 Typical Trademark Agency Case." Organized by the China Trademark Association, this selection was made by an evaluation committee composed of experts and scholars from the Bureau of Justice, courts, universities, and other institutions from numerous reported cases. This is the second time that Chipo’s case has been selected, following the "FILA" trademark infringement case selected as "2017-2018 Outstanding Trademark Agency Cases."

Case Overview:
In July 2018, Qinhuangdao Hongshun Technology Development Co., Ltd. (referred to as Hongshun Company) filed the "自卫" trademark in Class 10, designating goods items such as "sexual toys" and "vibrating massagers." The trademark was approved for registration in April 2019. After obtaining the trademark registration, Hongshun Company launched trademark infringement complaints against Taobao sellers, resulting in the forced removal of their products and hindrance to their normal business operations. As a result, the Taobao sellers entrusted our firm to file the invalidation application against the above said "自卫" trademark.

In addition to the "自卫" trademark, Hongshun Company also filed trademarks using Taobao search keywords such as "烟管(Chinese character of smoking pipe," "潮女(Chinese character of trendy girl)," "超仙(Chinese character of super fairy)," "慰器(Chinese character of comfort device)," "QQ," and maliciously filed well-known trademarks of others such as "如家(Chinese character of Home Inns)," "速8(Chinese character of Super 8)," "推特(Chinese character of Twitter)," and "ZOHO" (a SaaS giant). They also used the transferred "Lincoln" trademark on products designating "urns etc." Based on the above malicious filing behaviors of Hongshun Company, our attorney mainly relied on Articles 4, 7(1), and 44(1) of the Trademark Law to request the Trademark Office to declare the "Self-Defense" trademark invalid.

Official Outcome:
The substantive provisions of Article 44(1) of the Trademark Law of 2013 mainly apply to situations where improper registration damages the public interest or disrupts public order. Based on the ascertained facts, apart from the disputed trademark in this case, the respondent has registered over a hundred trademarks in multiple goods and services classes. Among them are " DIESEL 飒拉", "林肯(Chinese character of Lincoln)" etc., some of which have been rejected, canceled, or declared invalid. In this case, the respondent did not respond to our invalidation application, proving their genuine intent to use the registered trademarks. Therefore, the respondent's behavior lacks the legitimacy required for registering a trademark. Such improper registration not only leads to public confusion about the origin of goods but also significantly exceeds normal business needs, disrupting the normal order of trademark registration management and damaging fair competition in the market. Therefore, it is appropriate to determine that the registration of the disputed trademark constitutes the situation described in Article 44(1) of the Trademark Law of 2013, i.e., "obtaining registration by other improper means."
In accordance with the provisions of Article 44(1) of the Trademark Law of 2013, Article 44(1) and (3) and Article 46 of the Trademark Law of 2019, the office renders the following decision:
The disputed trademark is declared invalid.

Typical Significance:
The Trademark Law revised in 2019 curbs the traditional practice of "hoarding trademarks" in some extent. However, with the development of the internet economy and increased efforts to combat traditional "hoarding" behaviors, malicious applicants have found alternative ways. They apply for trademarks using e-commerce platform keywords and maliciously file intellectual property complaints/lawsuits against unspecified e-commerce sellers to demand "settlement fees," seeking illegitimate gains.

For instance, in this case, the trademarks applied by Hongshun Company, such as "扣扣", "自卫" , and "跳到" are all keywords related to the Taobao platform. Immediately after these trademarks were approved for registration, Hongshun Company launched malicious trademark complaints against numerous sellers on the Taobao platform who use these associated keywords. Through these complaints, they extorted "settlement fees." If the Taobao platform sellers did not pay the "settlement fees," their products would be forced to be taken down, thereby disrupting normal business operations.

The National Intellectual Property Administration took a strong stance in this case, applying Article 44(1) of the Trademark Law to combat such emerging malicious registration behaviors, leaving no place for malicious applicants to hide and providing a favorable business environment for legitimate enterprises.

In the future, Chispo will continue to develop from good to great, aiming to stay at the forefront of the intellectual property industry. With a broad global perspective, Chispo will give full play to its own advantages and integrate high-quality industry resources to sustainably develop in the field of intellectual property, and contribute to the innovative development for enterprises. Chispo will also implement the important instructions of General Secretary Xi Jinping regarding brand building with its practical actions, and help innovative entities promote the high-quality and sustainable development of their trademark brand construction.