Chinese IP Law Updates
March 24, 2020

Law Application and Liability on Refusal of Trademark “Huo Shen Mountain” in relation to the epidemic

Author: Edmond Ou, Steven Dong

During the epidemic, chaotic scenes spawned across the country including manufacturing and selling of fake masks, cyber fraud, gouging for medical protective supplies, which severely hindered market economy, violated public morals, and displayed a negative social impact. Unexpectedly, among applications for trademark registration, a handful of infamous people applied for hospital names like “Huo Shen Mountain”, “Lei Shen Mountain” and “Fang Zhou Hospital”, and several names of heroes fighting, or perishing, in harm’s way against COVID-19 virus, “Zhong Nanshan” and “LI Wenliang”, which are closely related to the outbreak to an extent well-known to the general public and thus have been dismissed by CNIPA pursuant to Article 10.1.8 of the Trademark Law, “having any other adverse effects”.

In accordance with the Trademark Examination and Trial Standard, “other adverse effects” indicates texts, graphics, or any other components of trademarks that may impose negative effects upon social public interests of politics, economy, culture, religion, and ethnicity with signature refused cases of trademarks such as “SARS” designated on toilet paper and “Ebola” on the water heaters for a shower, etc. Beyond their literal meaning, the rejected “Huo Shen Mountain” and other trademarks closely relating to the epidemic are imbued with the gratitude to Chinese people who have made contributions to the fight against the epidemic and are the best representation of the Chinese people’s proactive fight against the epidemic. The use of these words belongs to the public interests in a sense. Hence, the above registrations are detrimental to public interests and evidently falls into the circumstance of “having any other adverse effects”. The finding by CNIPA adhering to Article 10.1.8 of the Trademark Law sticks to the fact and is in compliance with correct laws.

Furthermore, in addition to the provisions of Article 10.1.8 of the Trademark Law, could any other provisions be applied to reject this batch of trademarks? The author would like to make a brief discussion on the topic, here.

“Huo Shen Mountain” and “Lei Shen Mountain” are temporary hospitals that emerged in Wuhan City amid the outbreak aimed at relieving pressure upon medical treatment. Where an ordinary entity applied for the above two marks in Classes 5, 10 & 44, the marks may be fraudulent and apt to cause the public to suppose branded goods or services stem from Huo Shen or Lei Shen Hospitals, or in Wuhan, which would rise confusion toward the origin of products. Therefore, the author believes, countering applications of “Huo Shen Mountain” and “Thor Mountain” in Classes 5, 10 & 44, using Article 10.1.7 is a viable route for dismissal.

In addition, considering some of the applicants are in violation of Article 4 of the Trademark Law and Article 8 of the Several Provisions on Regulating Trademark Registration Applications, constituting “applying for trademark registration in bad faith for a purpose other than use”, their applications could be refused in accordance thereto. In case of applications for “LI Wenliang” (a doctor who bravely perished in the epidemic) in classes 10, 30, 32, 33, 35, 41, 43, 44, etc., the applicant, Shanghai Weili Network Tech Co., Ltd., was founded in August 2008 with business scope mainly associated to Classes 41 and 42, but in fragile relation to other Classes. During just one and a half years, they registered a total of 146 trademarks, including “罗大柚” (homonymous with a famous singer name), “奇秦” (homonymous with another famous singer name), 清风澈” (similar with “清风” a famed paper brand) in several Classes containing Class 16 [paper, cardboard, etc.], and “LI Wenliang” (a perished doctor, belonging to a public character with certain reputation). Based on the above, Shanghai Meili applied for trademarks in huge numbers, covering a large range of Classes, and repeatedly squatted names of celebrities, famous marks of others, in violation of several circumstances specified in Article 8 of the Several Provisions on Regulating Trademark Registration Applications. Therefore, the author has reasons to believe Shanghai Meili‘s application is seeking to hoard trademark resources and obtain unjust profits, under the circumstance of “preempting trademark registration in bad faith for a purpose other than use”, which could be refused using Article 4 of the Trademark Law.

It is worth noting that the “Huo Shen Mountain” and other trademarks were rejected far earlier than the usual rejection process due course and that from the registration date to the rejection notification it only took approximately one month, about four months earlier than usual. A rejection received such in advance reflects that the Trademark Registration Examination Department is playing a more restrictive and disciplinary role and severely cracks down on such malicious registrations. At the same time, the agencies that pursued the rejected applications have all been disclosed before the public, which has always been a rare occurrence in the past. The author believes that these trademark agencies are likely to be punished to different degrees for their acts as agents and that they are bearing certain legal responsibilities, mainly in accordance with Articles 19 and 68 before the Trademark Law and Articles 4 and 13 of the Several Provisions on regulating Trademark Registration Applications.

With increasing attention paid to the protection of intellectual property rights in China and the gradual strengthening of the crackdown on counterfeiting infringement and the malicious registration of trademarks, the public’s awareness of intellectual property rights protection is also continuously increasing, as such the number of applications for trademark registration is on the rise.