How should trademarks be selected? Start-ups have seen it!

Shanghai Free Trade Zone Lingang New Zone has been established for more than a year, more than 15,000 new enterprises settled in the new zone, an increase of 70% year-on-year, with registered capital of more than 200 billion yuan. In the process of research and communication with enterprises, some enterprises reflect that the initial stage of intellectual property applications and protection is easy to be ignored, after the problem does not know how to deal with, the most common problem is the registration and management of trademarks.

In the context of brand economy, the value of trademarks is increasingly prominent, is not only a simple mark, it carries the image of enterprises, become an important weight for enterprises to enhance competitiveness, in the development of high-quality enterprises play an extremely important role.

TodayLingang New Area Trial StationJudge Yu Hongxia answers questions about how start-ups develop trademark "strategies".

Q1:

As a start-up, is it necessary to apply for a registered trademark?

Judge:

Many start-ups will think that enterprises are just starting out, should focus on technology research and development, product sales, market development these can bring direct economic benefits to enterprises in the field, there is no need to apply for registered trademarks so early, until the development of enterprises to a certain stage before registration is also necessary. However, many real-world cases tell us that this idea is "dangerous".

You know, the trademark is the moth of the corporate brand, if there is no trademark protection, the value of the brand will be greatly reduced.

Come on, let'sIf there is no registered trademark, then the enterprise will be less than a precise and efficient fight against "shanzhai", anti-counterfeiting weapons;

SecondlyIf a trademark is preempted by others, then the enterprise may face the dilemma of being sued for trademark infringement, and then have to completely change the brand, or seek trademark transfer, or embark on a long road of defending rights. Whatever the remedy, the cost will be far greater than trademark registration. Therefore, it is early to apply for trademark registration.

Q2 :

So what kind of logo should start-ups choose as a trademark?

Judge:

Before applying for a registered trademark, you can check in the trademark network whether the same or similar trademark already exists in the previous registration, to prevent the risk of infringement. The choice of trademark is a marketing issue as well as a legal one. From a marketing point of view, the trademark is best Lang Lang mouth, good recognition. But at the legal level, trademark selection is not always easy. For an logo to be registered as a trademark, there should simply be two requirements:One is significant and the other is not prohibited by law.

Significantness is a legal term that refers to the characteristics that a trademark should have sufficient to distinguish between the relevant public and the source of the goods. According to the provisions of China's Trademark Law, only the general name, graphics, model of this commodity, or only directly represents the quality of the goods, main raw materials, functions, uses, weight, quantity and other characteristics, will be considered to lack of significantness and will not be registered. For example, apply for "XXL" on clothing goods, apply for "big canteen" on restaurant services, etc. Conversely, deliberately designed, original or conceived text or graphics, such as Alibaba, are often easier to register because they are more significant.

If not prohibited by law, it means that an authority's logo, inspection mark, logo with misleading description or contrary to public order may not be registered as a trademark. In addition, the infringement of other people's first rights, such as copyright, design patent rights, enterprise name rights, portrait rights, such as the logo, can not be registered as a trademark. Once a trademark enters a "no-go zone" under the law, there may be a risk that it will not be registered or declared invalid, thus making the brand's operations unsealed.

Q3 :

There are so many categories when trademarks are registered, how to choose?

Judge:

When registering a trademark, you need to specify the category of goods and services in addition to the explicit marking. According to the Similar Goods and Services Sub-Table, goods and services are divided into 45 categories, of which 1-34 are commodities and 35-45 are services. Each group is subdivided into several similar groups with specific product names and service items.

Enterprises may combine their main business, business development planning, trademark use needs and economic budgets and other comprehensive selection of goods and services categories, but also to consider preventing others from being registered in similar goods or services.

There are four levels to consider: the underlying configuration should cover the existing business scope of the enterprise and the scope of business that may be developed in the future;

Q4 :

What else should I do after a trademark has been approved for registration?

Judge:

Trademark approval does not mean once and for all, and there are at least three areas of work that need to be followed up.

First, trademark management.To establish a complete trademark information account, how many registered trademarks, how many unregistered trademarks, how many well-known trademarks, the scope of goods or services designated by the trademark, the validity period of the trademark, the actual use of the trademark, the status of the trademark licensing, trademark application, use, preservation of the rights of the materials should be clearly grasped.

Second, trademark maintenance.The validity period of the registered trademark is ten years, and the renewal procedure shall be completed in time before the expiration date. In addition, it should be ensured that registered trademarks are used effectively. If a registered trademark is not used for three consecutive years without a valid reason, it is at risk of being revoked.

Third, trademark monitoring.We should strengthen the monitoring and management of external information and respond to possible threats to registered trademarks. For example, the State Intellectual Property Office regularly reviews and inspects the trademarks of the preliminary examination and announcement, pays close attention to the use of trademarks by competitors in the same industry, tracks the trademark infringement information of others, and takes timely measures to combat infringement. If it is found that there may be a conflict with its own registered trademark, it may file an objection during the period of the trademark announcement to prevent the trademark from registering. If the trademark has been registered, it may be requested to declare the registered trademark invalid within 5 years from the date of registration of the trademark, or not to use it for three years, depending on the subjective malice of the registrar, whether it is actually used, etc.

Q5 ：

Since the use of trademarks is important, what is the point of using registered trademarks?

Judge:

The life of a trademark lies in its use. Corporate image and brand value can be enhanced through the use of trademarks. An enterprise may use a registered trademark in goods, packaging or containers, in service premises, in service supplies, in advertising, exhibitions and other commercial activities, or in commodity transaction documents, etc., and shall have the right to mark "registered trademark" or "®" mark. It is important to note, however, that the exclusive right to registered trademarks is limited to approved registered trademarks and approved goods or services for use. Any trademark that changes the style of the logo on its own or exceeds the approved use of goods or services may only be regarded as an unregistered trademark and cannot be protected by exodability.

At the same time, the use of trademarks should also be careful not to be diluted as the generic name of the commodity, otherwise it will be revoked. For example, "Excellent Disk" was once a registered trademark and has a strong significance as a hypoththe word. However, due to the enterprise in the process of using trademarks did not properly control, "excellent disk" gradually became the common name of computer mobile memory, and was eventually revoked in accordance with the law.

It is also important to note that enterprises should pay attention to marks in the process of using trademarks and properly preserve supporting materials for the use of trademarks in commercial activities, including but not limited to contracts, media reports, photo videos, etc., in order to deal with possible disputes.

Q6 :

What should I do if I find that my trademark rights have been infringed by other enterprises?

Judge:

After the enterprise discovers the trademark infringement, it may take different measures to stop the infringement according to the trademark strategy of the enterprise itself and the nature and influence of the infringement. But before that, it is suggested that enterprises should not rush to publicity, should first of all do a good job of evidence fixed to the infringement, clear the identity of the infringer, determine the existence of the infringement and its damage consequences.

To combat trademark infringement, three means can be used: civil, administrative and criminal.Civil means that the trademark right owner shall file a civil action for trademark infringement with the people's court; the administrative means, that is, the trademark right owner may file a complaint with the market supervision and administration department or administrative law enforcement agencies such as the customs, and the infringer shall be investigated and punished by the administrative organ; and after the criminal means, that is, the infringement has reached the standard of criminal prosecution, the trademark right owner shall report or complain to the public security organ for the suspected trademark crime, and the judicial organ shall crack down on the trademark criminal offence according to law.

It is not difficult to find that civil litigation focuses on damages, while administrative and criminal means focus on punishing the infringer.The three start-up methods, certification standards, strike effect, etc. are different, the trademark right owner can choose one or combination according to the specific circumstances of the case.

The legal link

Swipe up to read

Trademark Law of the People's Republic of China

Article 9 Trademarks applying for registration shall have significant characteristics, be easy to identify, and shall not conflict with the legitimate rights obtained by others in the first process.

Trademark registrars have the right to mark "registered trademarks" or registration marks.

Article 10 The following marks may not be used as trademarks:

(1) the name or approximation of the name of the State of the People's Republic of China, the national flag, the national emblem, the national anthem, the military flag, the military emblem, the medal, etc., and the name or graphic of the name, emblem, location or landmark building of the central state organ;

(2) The name, national flag, national emblem, military flag, etc. of a foreign country is the same or similar, except with the consent of the Government;

(3) The name, flag, emblem, etc. of an intergovernmental international organization are the same or similar, except with the consent of the organization or if it is not easy to mislead the public;

(4) the same or similar to the official marks and inspection marks indicating the implementation of control and guarantee, except as authorized;

(5) the names and symbols of the Red Cross and the Red New Moon are the same or similar;

(6) With ethnic discrimination;

(7) With deception, it is easy for the public to misread the quality or origin of the goods;

(8) harmful to socialist morality or has other adverse effects.

The place names of administrative divisions at or above the county level or foreign place names known to the public shall not be used as trademarks. However, except for place names that have other meanings or are part of a collective trademark or certification trademark;

Article 11 The following marks may not be registered as trademarks:

(1) Only the generic name, graphics and model of this commodity;

(2) Directly representing the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the commodity;

(iii) Other lack of significant features.

Marks listed in the preceding paragraph may be registered as trademarks if they have been used to obtain significant features and are easily identifiable.

Article 22 The applicant for trademark registration shall fill in the goods categories and trade names of the trademarks in accordance with the prescribed commodity classification form and file an application for registration.

……

Article 39 A registered trademark is valid for ten years and is calculated from the date of approval of registration.

Article 32 Applying for trademark registration shall not impair the existing pre-existing rights of others, nor shall it be an improper means to preempt the registration of trademarks that have been used by others and have certain effects.

Article 33 Trademarks for preliminary examination and approval of a public announcement may, within three months from the date of the announcement, be challenged by any person who believes that they have violated the provisions of Article 13, paragraph 2 and paragraph 3, Article 15, Article 16 , Paragraph 1, Article 30, Article 31, Article 32 of this Law, or whoever believes to be in violation of Article 4, Article 10, Article 11, Article 12, Article 19, paragraph 4 of this Law. If there is no objection to the end of the notice, it shall be approved for registration, issued with a trademark registration certificate, and shall be announced.

Article 40 If a registered trademark expires and needs to be continued to be used, the trademark registrar shall, within twelve months before the expiration of the term, go through the procedures for renewal in accordance with the provisions; Each renewal registration is valid for ten years and is calculated from the day after the expiration of the last validity period of the trademark. If the renewal procedure is not completed at the end of the term, the registered trademark shall be cancelled.

……

Article 44 If a registered trademark violates the provisions of Article 4, Article 10, Article 11, Article 12, Article 19, Paragraph 4 of this Law, or obtains registration by deception or other improper means, the Trademark Office shall declare the registered trademark null and void;

……

Article 48 The use of trademarks referred to in this Law refers to the use of trademarks in goods, packaging or containers, as well as in commodity transaction instruments, or in advertising, exhibitions and other commercial activities to identify the source of goods.

Article 49 ……

If a registered trademark becomes the generic name of the commodity it approves for use or is not used for three consecutive years without a valid reason, any unit or individual may apply to the Trademark Office for the revocation of the registered trademark. The Trademark Office shall make a decision within nine months from the date of receipt of the application. If there are special circumstances requiring an extension, it may be extended for three months with the approval of the administrative department for industry and commerce under the State Council.

Article 56 The exclusive right of a registered trademark is limited to the approved registered trademark and the approved commodity used.

Article 57 Any of the following acts is an infringement of the right to exclusive use of a registered trademark:

(1) Using the same trademark as its registered trademark on the same commodity without the permission of the trademark registrar;

(2) The use of a trademark similar to its registered trademark on the same commodity without the permission of the trademark registrar, or the use of a trademark similar to or similar to its registered trademark on a similar commodity, may easily lead to confusion;

(3) Selling goods that infringe upon the exclusive right to use a registered trademark;

(4) forging or unauthorizedly manufacturing the registered trademark logo of another person or selling a registered trademark logo forged or manufactured without authorization;

(5) replacing the registered trademark and putting the goods of the trademark on the market without the consent of the trademark registrar;

(6) intentionally facilitating the infringement of the right to exclusive use of another person's trademark and helping others to commit the act of infringing the right to exclusive use of a trademark;

(7) causing other damages to other people's right to exclusive use of registered trademarks.

Source: Pudong Court, Shanghai

By:Yu Hongxia, Hu Wei

Compilation: Wu Jiale

Reprinted from: Shanghai Lingang

喜欢此内容的人还喜欢

How should trademarks be selected? Start-ups have seen it!

sent to have a look

Related articles to this post