Lawyers explain how startups should deal with trademark registration

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Recently, a news story has aroused the concern of Internet entrepreneurs: There is a "Qihoo Investment company" (360 has declared that the company has nothing to do with its own) to the National Trademark Office for more than 100 Internet start-ups brand or application of trademarks. Today I would like to discuss with you how the registered trademark of the start-up companies should deal with this matter?

Overview of the registration of trademarks

The author in the Trademark Bureau website Preliminary Search, found that the registered people including Tiger Sniff, Tiger flutter, Cicada travels, Ape Bank, the Regiment 800 and many more influential enterprises in the industry trademarks, the main type of registration is the 9th category, computer hardware and software, a small part of the 38th class, computer communications, instant Messaging. The application period between 2012 and 2013, a small number of applications have passed the Trademark Office of the preliminary review, entered the bulletin, most of the applications are not yet into the bulletin.

Ii. consequences of a trademark being registered

China's "trademark law" is the application of the first principle, the trademark Office in the review of trademark applications, the general only check whether the trademark prior to the application or registration, and will not consider the trademark is not registered others. Therefore, the probability of successful registration is not low. If the trademark of a start-up company is successfully registered by others, the consequences include: the registrant's exclusive right to use the trademark in the corresponding product and service is denied, the brand cannot be used or encountered, and if the brand is continued to be used, it may also be claimed by the registered person to be a trademark infringement.

The registration of the trademark is mainly the 9th category, computer software and hardware classes, for Internet enterprises, this is a very important category. In addition to the traditional software, for smartphones, tablet applications are similar to this category (the current category of mobile applications is not conclusive, but the 9th category is certainly the most recent class), entrepreneurs even if not civil prosecution, It is also a headache for the perpetrators to complain about trademark infringement to the trade and Industry Bureau or the major app stores.

The author encounters the more extreme case is 115 network disk trademark case, the case involved the conflict of rights in category 9th and category 42nd trademarks, and the 9th category "115" trademark holders complained to the major app stores about the 115 network disk trademark infringement of the 42nd trademark, resulting in a longer time in many programs stores can not download 115 network disk applications , although the Apple Store and the domestic mainstream Android app stores were restored to 115 online shelves with our help, the whole process did cause a certain loss to the company.

Iii. measures to deal with the registration of trademarks

There are three ways to deal with the trademark registration, some of the symptoms of the root causes, the following is introduced, introduce the symptoms first, and then introduce the root causes:

Path one, may raise the objection to the trademark which is not allowed to register.

In the case of this registration, the trademark has been registered, but the applicant's application has not been registered for the company, can be applied to the register to raise objections to the method of relief. According to China's trademark law, the registered trademark shall be first examined by the Trademark Office under the State Administration for Industry and commerce, and through the examination, enter the notice period of three months. In this three-month period, the entrepreneur may raise trademark objections to the National Trademark Office through a special trademark agency.

The success rate of objection is not high? According to the author's experience, if it is indeed a registered, through our agents, take back still is sure. The legal basis of the registered party is the provisions of 31st of the trademark law, the application of trademark registration shall not damage the existing prior rights of others, and may not use improper means to preempt the trademark which others have used and have certain influence.

In addition to remind the company to be registered, in the mention of trademark objections, remember to bring up a trademark in their own name, because even if the objection succeeds, but only voided the registration, you still need to apply for a trademark.

Path II, registered trademarks can be instituted to revoke the procedure.

If the registered trademark has already passed the notice period, obtains the registration, at this time the entrepreneur may in accordance with the trademark law 41st stipulation, to the state Industry and Commerce Administration Bureau Trademark Review Committee to initiate the cancellation application. The trademark law has a five-year limitation on the revocation of the application, that is, if the trademark has been registered for more than 5 years, it cannot be revoked on the basis of the registration. In addition, for the judgment of the business judges, if either party is not satisfied, can also be brought to Beijing's first Intermediate People's Court administrative proceedings.

For the revocation of a registered trademark, it is also recommended that the registrant initiate a trademark application synchronously, so that the trademark can be obtained after the registration mark has been revoked.

Path three, comprehensive and perfect application for trademark protection brand.

A start-up company should apply for a trademark for its major products and services at the beginning of its business. Many times, entrepreneurs because of money tight, did not apply for a trademark, which is a major hidden danger to the development of the company, now the Internet competition is very fierce, if the competition has been registered trademarks, and then continue to complain about the company's development will be very big blow. The other is the lack of application, that is, although the application of the category of services, but the association category did not apply, such as education software, only the 41st category of education, but did not apply for the 9th category, at this time the class 9th software class is still a lot of trouble.

In addition to the main categories, enterprises should be based on the development of enterprises to increase trademark protection, to increase the application of auxiliary categories. The author in the "Micro-letter trademark fall and Tencent trademark management process defects" mentioned: "The product has a development process, some originally humble products may develop into star products, at this time, the company's trademarks and other intellectual property protection measures will keep up, otherwise there will be problems." "For Tencent, the same is true of startups, the beginning of the budget is limited, not necessarily apply for many categories of trademarks, but if the company developed and expanded, trademark protection must be in time to keep up."

As to how to apply the trademark comprehensively, the author mentioned in the article "the Mobile Internet trademark risk which the taxi case exposes": "Many mobile applications tend to have the characteristics of the trademark category of multiple products and services online and offline, at which point legal risk can occur if only a single trademark category is applied ... The enterprise shall determine the scope of the application for the trademark according to the function involved in the product or service. ”

Modern social division of labor is highly refined, the above three trademark protection path, whether the objection, the cancellation or the determination trademark application scope and the application, in fact the Internet start-up enterprise cannot complete itself, but as long as the enterprise must have the intellectual property protection consciousness, may through the familiar Internet industry professional intellectual property Law organization to complete.

Author: yunting, senior partner of Shanghai Big Bang Law firm, intellectual property lawyer