Could Co-Founder Rush-Register A Planning Trademark As His Own?

lehmanbrown (By Luo Yanjie) Article 15 of both the 2014 version and the 2001 version of the Trademark Law stipulated that an agent shall not rush-register trademarks of the principal or the represented. In practice, Article 15 is always used to prevent from rush-registration. The following judgment will introduce a typical rush-registration case with new ideas for reference.

 Introduction to the Case:

Re-appellant (plaintiff at first instance, appellant at second instance): LEHMANBROWN LIMITED (the “HK Company”)

Re-respondent (defendant at first instance, respondent at second instance): Tradeamrk Review and Adjudication Board (the “TRAB”)

Court of first instance: Beijing No.1 Intermediate People’s Court

Court of second instance: Beijing Higher People’s Court  No.: (2012)高行终字第686号

Court of Retrial: Supreme People’s Court  No.: (2014)行提字第4号

The HK Company claimed in a lawsuit that, Edwarde Lehman preempted his rush-registration for No. 3013121 “Lehmanbrown” trademark (the “disputed trademark”) , which is a last name combination of Edwarde Lehman and Russell Brown, under class 45 for legal services, where it had already been planned as trademark and brand in use before the application date.

The HK Company filed a cancellation proceeding with the TRAB but was rejected by the reasoning that it cannot prove the disputed trademark to be used as a trademark before the application date. Dissatisfied with the rejection, the HK Company filed an administrative lawsuit, but the Beijing No.1 Intermediate People’s Court founded that HK Company was insufficient to prove it indeed had already use identical or similar marks in the same or similar services of the disputed trademark in business for the approval before the application date. In the second instance, Beijing Higher Court held the same opinion as the first instance, rejecting the claims of HK Company.  As the HK Company filed a retrial, Supreme People’s Court held main opinions as follows:

  1. Edwarde Lehman was an agent of HK Company.
  2. The disputed trademark was a planned trademark of HK Company which is under establishment.
  3. The approved goods for disputed trademark are strongly associated with that of HK Company in such aspects as content, way of serving and target consumer, and thus shall be determined as “similar service” pursuant to the trademark law.

In closing, Supreme People’s Court upheld the claims of HK Company.

Lawyer’s Comment:

  1. The scope of “agent” in the Article 15 of the Trademark Law

Article 15 of the Trademark Law (2001 version) stipulated that in the event that an agent or representative seeks to register the client’s trademark in their own name without the authorization of the client and faces objection from the client, such trademark shall not be registered and prohibited from being used. At the early judicial practices, many courts narrowed the understanding of the trademark agent and representatives dealing with trademark affairs.

However, Article 12 of the Opinions of the Supreme People’s Court Concerning Trial of Administrative Cases in Respect of Trademark Right Granting and Confirmation that took effect as of April 2010, and the Latest Trademark Law (2014 version) expanded the definition of the “agent” to the counterpart of contracts, and representatives based on sales and agency relationship such as distribution and agency. In this case, the registrar of the disputed trademark was one of founders of HK Company, fallen into the scope of “agent”.

  1. The Scope of goods as regulated in Article 15 of the Trademark Law

Pursuant to the Trademark Review Standards, the protection scope of trademark includes but is not limited to those being used for goods or services which are the same as or similar to those for which the trademark of the principal or the represented is used. However, it is important to note that, the TRAB and court in practice take casual judging standards over whether the rush-registered goods are the same or similar. Generally, they assume that the agent constitutes rush registration if the agent who has any-kind of link with the principal is determined to be with maliciousness. For example, in this case, since HK Company which is engaged in financial services is concerned with the applied goods, namely, legal services, of the disputed trademark, the court also determined them as similar services.

  1. A planned trademark shall be applied to Article 15 of the Trademark Law

In the past frequently rush-registration applied Article 15, the rush-registered trademark was the ones that had already been in use. However, this case rather special, it is the rush-registrar, a founder, that rush registered the trademark at the planning phase. This is why HK Company failed in the two instances. But in the judgment of the Supreme Court that the disputed trademark, a planned trademark, shall be under the protection of Article 15, undoubtedly providing further protection for the trademark owner.

Lawyer Contacts

You Yunting86-21-52134918

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