Case Overview:

The disputed trademark is Trademark No. 46622249 "刘一刀" (Liu Yidao), was applied for by the applicant Song Zhaowei on May 25, 2020, and was approved for registration on December 7, 2021. The approved services included Class 38 services such as "broadcasting television shopping programs; synchronously broadcasting television on the global communication network, the Internet, and wireless networks; Internet broadcasting services."

 

Our firm, upon client's request, analyzed the case and found that the individual business license submitted by the applicant when applying for the registration of the disputed trademark had been deregistered, resulting in the loss of legal status and failure to meet the conditions for obtaining trademark exclusive rights. Based on Article 4 and Article 44, Paragraph 1 of the Trademark Law, which refer to "obtaining trademark registration by fraudulent means," our firm filed an application for invalidation of the disputed trademark.

 

Adjudication Result:

Eventually, the Trademark Review and Adjudication Board supported our claim, applying the relevant provisions of Article 4 and Article 44, Paragraph 1 of the Trademark Law regarding "obtaining trademark registration by fraudulent means," and declared the disputed trademark invalid (see specific findings below).

 

From the established facts, it can be seen that the business type shown on the business license submitted by the applicant when applying for the registration of the disputed trademark was an individual business, operated by the applicant, and was deregistered on August 14, 2018. According to Article 4 of the Trademark Law, "Natural persons, legal persons, or other organizations engaged in production and business activities who need to obtain exclusive rights to their goods or services through trademarks shall apply for trademark registration to the Trademark Office." The individual business license of the applicant was deregistered on August 14, 2018, and, as of May 25, 2020, the applicant did not have the legal status to apply for the registration of the disputed trademark. Therefore, the registration of the disputed trademark violated the provisions of Article 4 of the Trademark Law.

As mentioned earlier, when the applicant applied for the registration of the disputed trademark, the individual business license had already been deregistered. In this situation, applying for trademark registration with a deregistered license constitutes a concealment of the true facts from the competent trademark administrative authority and obtaining trademark registration by fraudulent means. Therefore, the registration of the disputed trademark constitutes the situation referred to in Article 44, Paragraph 1 of the Trademark Law, "obtaining trademark registration by fraudulent means."

 

Case Analysis

The focal issue in this case is whether the applicant has the legal status to apply for trademark registration.

1. Determination of Article 4 of the Trademark Law:

Article 4 of the Trademark Law stipulates that the subject of the registration applicant should be a natural person, legal person, or other organization. The purpose of registering a trademark is to identify the source of goods or services when used in production and business activities. The "Notice on Matters Concerning Natural Persons Applying for Trademark Registration" issued by the Trademark Office in 2007 stipulates that the scope of goods and services applied for by a natural person in a trademark registration should be limited to the business scope approved in their business license or relevant registration documents or limited to their own agricultural and sideline products. On March 14, 2016, the Trademark Office issued a notice stating that it would no longer examine whether the declared scope of goods or services in trademark registration applications for individual businesses was within their approved business scope. In other words, while there is no longer a limitation on the category of goods/services for natural persons applying for trademark registration, the requirement for having the qualification of an operating entity remains unchanged. The "Trademark Examination and Trial Guidelines" (2021) also require that applicants for trademark registration must comply with the provisions of Article 4 of the Trademark Law. If the applicant is a mainland China natural person, they should provide documents proving the qualification of the subject engaged in production and business activities, such as a business license for an individual business with a unified social credit code, a copy of the rural land contract operation contract (limited to the category of self-operated agricultural and sideline products), etc.

 

In this case, the disputed trademark's application showed an address of "Room 608, Unit 4, Building 5, Wenxin Jiayuan Community, Xuanhua Street, Pingquan City, Hebei Province." Through a search on the National Enterprise Credit Information Publicity System, it was found to be identical to the business address of "Pingquan Town Pingquan Clean and Hygienic Supplies Sales Department," and the operator of this individual business was Song Zhaowei, identical to the applicant. Furthermore, this individual business was deregistered on August 14, 2018, as verified by the facts found by the China National Intellectual Property Administration (CNIPA) during the examination.

 

2. Upon investigation, it was found that the subject qualification certificate submitted by the applicant when applying for the disputed trademark was an individual business license, registered as "Pingquan Town Pingquan Clean and Hygienic Supplies Sales Department," with registration number 92130823MA09LDY87J, and the operator's name was Song Zhaowei. According to the National Enterprise Credit Information Publicity System, this entity was deregistered on August 14, 2018. 

 

Therefore, since the individual business license of the applicant was deregistered on August 14, 2018, the applicant did not have the legal status to apply for the registration of the disputed trademark on May 25, 2020. The application for the registration of the disputed trademark violated the relevant provisions of Article 4 of the Trademark Law.

 

2. Article 44, Paragraph 1 of the Trademark Law "Obtaining Trademark Registration by Deceptive Means":

Article 44, Paragraph 1 of the Trademark Law stipulates that the act of "obtaining trademark registration by deceptive means" refers to the trademark registrant, in applying for trademark registration, using methods such as fabricating or concealing facts, submitting forged application documents, or other supporting documents to deceive the trademark registration department. This behavior includes but is not limited to:

(1) The act of forging application document seals or signatures;

(2) The act of forging or altering the applicant's identification documents, including the use of false identification documents such as ID cards, business licenses, or the alteration of important registration items on identification documents such as ID cards, business licenses, etc.;

(3) The act of forging other supporting documents.

 

Applied to this case, the applicant, as a natural person, should provide a genuine and valid individual business license according to relevant regulations when applying for trademark registration. However, it is evident that the applicant did not adhere to the principles of honesty and creditability. In applying for the disputed trademark, the applicant submitted an already deregistered individual business license. Since the applicant did not entrust a trademark agency to handle the trademark application, they should have been aware of the status of all the materials they submitted for the trademark application. Once the trademark was registered, the exclusive trademark rights were enjoyed by the applicant, Song Zhaowei. As such, the materials submitted by the applicant when applying for the registration of the disputed trademark did not match the actual situation, indicating a deceptive act of providing false business licenses to deceive the trademark authority. The China National Intellectual Property Administration's approval of the registration of the disputed trademark was based on the materials provided by the applicant, including the false individual business license. There is a direct causal relationship between the applicant's subjective intent and objective behavior, namely, the submission of a deregistered individual business license for trademark registration which constitutes an act of concealing the true facts and obtaining trademark registration by deceptive means. The application for the registration of the disputed trademark violated the relevant provisions of Article 44, Paragraph 1 of the Trademark Law.