【Brief Facts of the Case】
On July 4, 2018, Qinhuangdao Hongshun Technology Development Co., Ltd. (hereinafter referred to as the “Respondent”) applied for the registration of the trademark “self-defense” (hereinafter referred to as the “disputed trademark”) on Class 10 vibrating massagers and other goods, and was approved for registration on April 14, 2019. After the trademark was approved for registration, the respondent filed a trademark malicious infringement complaint with a number of sex toy online stores; In addition, the respondent also applied for more than 100 trademarks in multiple categories such as 3, 5, 10, 14, 20, 35, 38, 40, etc., including well-known brands such as “Lincoln”, “Super 8” and “Homeinn”, as well as product keywords on multiple e-commerce platforms such as “masturbation”, “Yin Jing”, “Smoke Pipe”, “Chaonu” and “Super Fairy”. We invoke the relevant provisions of Article 44.1 and Article 11.1.2 (3) of the Trademark Law to file a request for invalidation of the disputed trademark. The CNIPA held that the respondent’s conduct did not have the legitimacy of applying for a registered trademark, and that the registration of the disputed trademark had constituted a situation of “obtaining registration by other improper means”, and declared the disputed trademark invalid.
【Lawyer’s Comments】
The Trademark Law, amended in 2019, has cracked down on traditional “trademark hoarding” to a certain extent, but due to the development of the Internet economy and the intensification of the crackdown on traditional “trademark hoarding”, malicious registrants have “found another way”, that is, by applying for the registered trademark of the goods on the e-commerce platform, and conducting malicious intellectual property complaints/lawsuits against unspecified e-commerce online stores, and demanding “settlement fees” from multiple complained online store merchants to seek improper benefits. The CNIPA has once again struck with an iron fist and applied Article 44.1 of the Trademark Law to crack down on such emerging malicious registrations, so that malicious registrants have nowhere to hide and provide a good business environment for enterprises.
