Case Summary:

Qinhuangdao Hongshun Technology Development Co., Ltd. (hereinafter referred to as the "Applicant") submitted an application for the registration of the trademark "自卫" (Zìwèi) (hereinafter referred to as the "Disputed Trademark") in Class 10, covering products such as vibration massagers, on July 4, 2018. The registration was granted on April 14, 2019. Subsequent to the registration of this trademark, the Applicant initiated malicious infringement complaints against several online stores specializing in adult products. Moreover, the Applicant filed an excess of a hundred trademark applications across various classes, encompassing renowned brands such as "林肯" (Lincoln), "速8" (Speed 8), "如家" (Home Inn), and keywords pertinent to multiple e-commerce platforms, including "自慰" (Masturbation), "阴经" (Vagina), "烟管" (Tobacco Pipe), "潮女" (Trendy Girl), and "超仙" (Ultra Immortal). The CHISPO Non-Litigation Team invoked relevant stipulations from Article 44(1) and Article 11(1) of the Trademark Law, filing invalidation requests of the Disputed Trademark. The Intellectual Property Office deemed the actions of the Applicant as lacking the essential legitimacy for trademark registration and constituting a circumstance of "obtaining registration through other unjust means," leading to the subsequent invalidation of the Disputed Trademark.

Legal Commentary: 

The 2019 amendment to the Trademark Law has, to a certain extent, addressed the conventional practice of "hoarding trademarks." However, the rapid advancement of the Internet economy and heightened endeavors to counteract conventional "hoarding trademarks" have encouraged malicious registrants to explore novel avenues. These registrants opt for trademark applications as keywords specific to e-commerce platforms and launch malicious intellectual property complaints/lawsuits targeting various online retailers. This ploy entails coercing multiple accused retailers into paying out "settlement fees". In such cases, the Intellectual Property Office undertakes decisive measures by invoking Article 44(1) of the Trademark Law to combat such emerging malicious registration behaviors. This leaves malicious registrants legally exposed and nurtures a favorable business environment for enterprises.