What are the risks of trademark application?
I. Possible Damage Caused by Rejection of Trademark Registration Application In China's legal system, the Trademark Office's examination of trademark registration application is based on the principle of substantive examination. If the Trademark Office finds that the applicant's application for registration violates the prohibitive provisions of the law, it will reject its application for registration ex officio. For the applicant, once the registration application is rejected, the following losses may occur. 1, economic loss. According to relevant regulations, if the application for trademark registration is rejected, the Trademark Office will not refund the fees collected. Trademark agencies generally do not refund the agency fees charged. This means that once the application for trademark registration is rejected, the applicant will bear the loss of trademark registration fees. The applicant applies for registration of the same trademark in several or even dozens of categories at the same time. If the trademark is rejected due to adverse effects, the loss of its registration fee will be huge. 2. Loss of time. Before the trademark registration application was approved by the Trademark Office, many applicants had already started to use the trademark. However, trademark examination in China takes a long time, during which, due to the use and promotion of applicants. Trademarks that have applied for reexamination have gained great popularity. Once the application for trademark registration is rejected by the Trademark Office, the applicant's previous efforts will be in vain. Moreover, according to the Regulations on the Protection of Intellectual Property Rights of the Customs, the protection of trademark rights by the Customs is limited to registered trademarks. Unregistered trademarks are less protected by customs. If the applicant's trademark registration application is rejected by the Trademark Office, even if the applicant can approve the trademark registration through the rejection review procedure, the review period of the trademark rejection review case is long, which will affect the process of obtaining customs protection for the trademark. 3. Legal fees. There are two main legal risks arising from the rejection of the application for trademark registration: first, if the applicant applies for international registration of trademarks in accordance with the Madrid Agreement on International Registration of Trademarks after applying for registration in China. Once the trademark is rejected by the Trademark Office, the applicant's application for international registration will be rejected because the basic registration is invalid according to the principle of central crackdown. Second, the application for trademark registration was rejected by the Trademark Office in accordance with Article 28 of the Trademark Law on the grounds that it was similar to the previously registered cited trademark. If the applicant fails to file a rejection of the application for reexamination within the statutory time limit or it is unreasonable to reject the application for reexamination, the ruling has legal effect on the determination that the applied trademark is similar to the cited trademark. If the applicant has already used the trademark, the trademark owner may claim that the applicant's use constitutes trademark infringement according to the ruling and require the applicant to bear the tort liability. To sum up, if the application for trademark registration is rejected by the Trademark Office, it will have a great impact on the applicant's rights and interests. Therefore, in the process of trademark application, we should try to avoid the rejection of the registration application. However, in the actual operation process, there are certain risks in trademark registration, and the applicant's control over the registration risk is weak. How to avoid risks is an important work in the process of trademark registration. Two. Risks in the process of trademark registration application Articles 10, 1 1 and 28 of China's Trademark Law explicitly prohibit the registration of trademarks. If the above rules are violated, the trademark registration application will be rejected by the Trademark Office. In the process of trademark examination, examiners have higher discretion, and different examiners have different examination standards. This makes it impossible for applicants to effectively control the registration risk before applying. The author summarizes the possible risks in the process of trademark registration as follows: 1, which is similar to other people's previous trademark registration applications. Although the State Administration for Industry and Commerce has opened a trademark inquiry system, there are some shortcomings in the trademark inquiry service provided by China Trademark Online. First of all, the system has a blind search period of six months, and the registration application submitted within six months cannot be queried through the system. Secondly, although the system can accurately query the same trademark registered earlier, it still has great shortcomings in the query of similar trademarks. Thirdly, the system queries graphic trademarks through the description of graphic elements. Because inquirers and trademark information recorders have different understandings of trademark elements, the trademark inquiry system still cannot accurately inquire about graphic trademarks. Finally, the system can only accurately query the similarity of goods using trademarks to categories, but can't query the similarity of each kind of goods, and can't accurately query the similarity of similar trademarks used on similar goods in similar groups. In the process of examination, the judgment of similar trademarks and similar commodities depends on the examiner's discretion, especially graphic trademarks, and there is no strict and unified examination standard. Even if an accurate inquiry is made about a previously registered trademark, the Trademark Office may reject it according to Article 28 of the Trademark Law. 2. Violation of prohibitive provisions Article 10 of China's Trademark Law makes prohibitive provisions on trademarks. However, in the practice of trademark registration application, it is impossible for the applicant to know all walks of life in advance. The registered trademark applied for can easily violate this provision. For example, according to this regulation, administrative divisions at or above the county level, famous foreign cities and signs that cause adverse effects may not be used as trademarks. However, there are thousands of county-level administrative divisions in China, and it is impossible for the applicant to be fully familiar with them when registering a trademark. It is even more impossible to know all about famous foreign cities. The applicant's registration behavior did not confuse the public, but the trademark application was rejected by the Trademark Office because it was objectively the same as the administrative division at or above the county level. In the practice of examination, it is generally forbidden to register religious words as trademarks. However, because many applicants don't believe in religion in their lives, they can't understand the religious meanings contained in some religious terms that have been put into life. Such trademarks are easily rejected by the Trademark Office in accordance with Article 10 of the Trademark Law during the application process. For example, a company in Beijing applied for the registered trademark of its online game Tianlong Babu. The Trademark Office rejected its application for registration in accordance with Article 10 of the Trademark Law. 3. Lack of distinctiveness According to Article 1l of the Trademark Law, marks indicating the characteristics and quality of the goods used shall not be used as registered trademarks. According to the basic principles of trademark law, according to the relationship between trademarks and the goods used, they can be divided into fictional trademarks, narrative trademarks and indicator trademarks. Descriptive trademarks and indicative trademarks are closely related to the goods using the trademarks, and are easily regarded as descriptions of the characteristics of the goods, so the application for registration is rejected. There are certain risks in the registration of such trademarks. For fictitious trademarks, although the degree of correlation with the goods used in trademark applications is low. However, in practice, when the popularity of the trademark reaches a certain level, the applicant wants to protect the market value of the trademark. Often registered in all categories of goods, there is a certain risk at this time. For example, the "Apple" computer does not belong to the description of the ninth category of goods, which is in compliance with the law. But if it is extended to 3 1 fruit, it is obviously a description of the goods for which the trademark is applied. Three. Avoidance of risks in the process of trademark application In view of the above registration risks, the author summarizes the following registration methods to avoid registration risks: 1. Divide the various elements of the trademark and apply for registration separately. The examination standards for letters, characters and graphics in a trademark are different. Because the text part has strong identification and correspondence, the applicant can flexibly design the text part of the trademark to avoid legal prohibition. However, the graphic part and the English letter part have poor certainty, and the examiner has strong discretion in the review process. Even if the applicant deliberately distinguishes the trademark from the previous application in the process of designing the trademark, it may be recognized as a similar trademark in the process of examination because of the different aesthetic standards of everyone. Once a single part of a combined trademark is similar to another person's previously registered trademark or violates the legal prohibition, the whole trademark will be rejected as a whole. Due to the above risks, the author suggests that when applying for registration of combined trademarks, trademarks can be divided into three independent trademarks: words, graphics and letters. In this way, even if some parts violate the law, it will not affect the use of other parts. In addition, China law does not prohibit the use of multiple trademarks on a commodity. After the above-mentioned trademarks are approved and registered, they can be used in combination to achieve the use effect of combined trademarks. Applying for registration by splitting can not only avoid the registration risk, but also increase the flexibility of trademark use. 2. The actual use of a trademark after applying for trademark registration According to the theory of trademark law, if the applied trademark is similar to or simply reflected by factors such as the characteristics of goods, it is determined that the trademark is not significant and may not be used as a registered trademark. The distinctiveness referred to here is the inherent distinctiveness of a trademark, also known as inherent distinctiveness. However, Article 11 of the Trademark Law also stipulates the situation of obtaining distinctiveness through use. Salience here refers to the external salience of a trademark. The author believes that after applying for registration of a trademark, the applicant should actively use it and do a good job in promotion and publicity. Because the application period of a trademark is generally as long as three years, even if the trademark is considered inconspicuous, after three years of active promotion, it is possible to make the trademark conspicuous to meet the legal requirements. However, it should be noted that if the trademark has obvious similarities with other people's previous registration applications, then the applicant should strictly manage the use behavior. Trademark approximate examination is a discretionary process of examiners, which has certain risks. If the Trademark Review and Adjudication Board supports the reasons for rejection by the Trademark Office in the process of rejection and reexamination, the judgment that the trademark applied for reexamination is similar to that of others becomes res judicata. In this case, the trademark used by the applicant in the registration process can be regarded as trademark infringement. 3. Protecting trademark rights through various legal means The trademark application process generally lasts for three years, during which the applicant does not enjoy exclusive rights. This stage is the most fragile stage of trademark legal protection. If others use the same trademark, it will not only cause confusion and misunderstanding among the relevant public, but also make the trademark lose its distinctiveness and become the common name of goods. Therefore, the author suggests that the trademark owner should protect the intangible property contained in the trademark by other means during the application process. First of all, copyright registration can be submitted to the copyright protection center as a work of art or calligraphy in a trademark. In this way, the applicant's exclusive right to graphics is determined in the form of copyright. Copyright registration is cheap, and copyright protection centers in many places do not charge for copyright registration. Moreover, the scope of protection is wide, and it is not limited by the types of goods used. Even if others use the trademark in an unrelated category, it can be regarded as infringement. However, it should be noted that copyright only protects ideas, not expressions. If others use similar trademarks, it will cause confusion and misunderstanding among the relevant public, but it does not constitute copyright infringement. Secondly, trademarks and packaging decoration can apply for design patents. In view of the strong protection of patent rights in China. Applying for design can strongly protect logo. Moreover, the examination period of design patents is much shorter than that of trademarks. There is no restriction on the types of goods used in patent right. Because of the principle of equivalence in infringement judgment, even if the trademark used by others is different from the trademark applied for registration, it will be considered as infringement. However, it should be noted that if the application for a patent for the design of a logo does not meet the requirements of the patent law for patent novelty, it is a typical junk patent. And patents need to pay a certain annual fee. If the infringer puts forward the patent invalidation procedure, it will affect the actual use effect of the right. To sum up, the author believes that although there are certain risks in the process of trademark examination, if you do a good job of pre-application inquiry and formulate a systematic registration plan according to the characteristics of the industry, you can effectively avoid the above risks and ensure that the legitimate rights and interests of the applicant are effectively protected by law.