China’s State Administration for Market Regulation Releases Typical Cases of Intellectual Property Enforcement for 2021

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On April 21, 2022, the State Administration for Market Regulation (SAMR) released the Typical Cases of Intellectual Property Enforcement by Market Supervision Departments (市场监管部门知识产权执法典型案件). The 20 cases involved trademark infringement, patent counterfeiting, Olympic logos, malicious trademark registration and the unauthorized practice of patent law, etc. Of foreign companies involved, one Chinese company was fined 10.55 million RMB for infringement of John Deere’s trademark and another was fine 1.05 million RMB for infringement of Costco’s Kirkland trademark.

  1. The Market Supervision Bureau of Xinchang County, Zhejiang Province investigated and dealt with the case of Zhejiang Zhongye Agricultural Machinery Equipment Co., Ltd. infringing the exclusive right of registered trademark

  Xinchang County Market Supervision Bureau received a report from John Deere (China) Investment Co., Ltd., claiming that the agricultural tractors produced and sold by Zhejiang Zhongye Agricultural Machinery Equipment Co., Ltd. infringed on its exclusive right to use a registered trademark. Xinchang County Market Supervision Bureau and Shaoxing City Market Supervision Bureau established a project group to investigate. 

  After investigation, since June 2018, the infringers have entrusted a company to make and use the deer graphic logo  on agricultural tractors . Compared with the graphic trademark with registration number G910051 held by the complainant, the logo pattern is similar in composition, design style and overall shape, and is a similar trademark. As of the investigation, the infringers produced and sold a total of 87 tractors, with 1 in stock, with a total illegal business revenue of 3.7024 million RMB and an illegal income of 46,000 RMB. The behavior of the parties violated Article 57 of the Trademark Law. On June 29, 2021, the Xinchang County Market Supervision Bureau imposed an administrative penalty in accordance with the law, ordering the parties to immediately stop the infringement, confiscate one infringing tractor, confiscate 46,000 RMB of illegal income, and impose a fine of 10.55 million RMB. 

  Without the permission of the trademark registrant, using a trademark similar to its registered trademark on the same kind of goods, or using a trademark that is the same or similar to its registered trademark on similar goods, will easily lead to confusion, not only infringe the exclusive right to use the registered trademark, but also mislead consumers or disrupt the market order of fair competition. The investigation and punishment of this case has effectively deterred infringement and illegal acts, and safeguarded the legitimate rights and interests of rights holders. 

  2. The Suining County Market Supervision Bureau of Jiangsu Province investigated and dealt with the case of Youshang Import and Export Trading (Suining) Co., Ltd. infringing the exclusive right of registered trademark 

  The Suining County Market Supervision Bureau received a report from the American Costco Wholesale Company and launched an investigation into the suspected infringement of the exclusive right of registered trademark by Youshang Import and Export Trading (Suining) Co., Ltd. 

  After investigation, from April 2019 to February 2021, the outer packaging of the nut products sold by the infringer through Taobao was marked with a logoImage, and “TM” mark was marked in the lower right corner, which was similar to the registered trademark of the complainant Image, and the involved business revenue was 2.1115 million RMB. Without the permission of the trademark registrant, the party concerned used a trademark similar to its registered trademark on the same commodity, which violated Article 57 of the Trademark Law. After the incident, the parties actively cooperated with the investigation, truthfully stated the illegal facts, provided evidence materials, and actively negotiated with the complainant to actively reduce the harmful consequences of the illegal behavior. On December 14, 2021, the Suining County Market Supervision Bureau issued an administrative penalty in accordance with the law, ordering the parties to immediately stop the infringement, confiscate the infringing goods, and impose a fine of 1.05 million RMB. 

  In this case, most of the labels of the prepackaged food sold by the parties on the online store are marked in foreign languages, and the trademark used is similar to the registered trademark of Costco Wholesale Co., Ltd., which is easy to cause confusion for consumers when purchasing. During the investigation, the party claimed that the outer packaging design of the nut products it sold had obtained the design patent right, but the patent right was obtained after the time when the complainant’s trademark was registered. Violations shall be investigated and punished according to law. 

  3. The Anshan Municipal Market Supervision Bureau of Liaoning Province investigated and punished the case of infringement of the exclusive right of registered trademark by Xiaozhang Communication Accessories Firm in Tiedong District 

  According to the clues transferred by the public security organs, the Anshan Municipal Market Supervision Bureau conducted an investigation on the suspected sale of counterfeit goods by Xiaozhang Communication Accessories Firm in Tiedong District. 

  Law enforcement officers seized 60 mobile phone batteries, 293 mobile phone assemblies, 772 touch screens, and 850 back covers of different brands sold by the parties using “HUAWEI”“honor”“Image” “Vivo”, “OPPO”, “MI” and other registered trademarks. The parties admitted that the purchase price of the accessories involved was lower than the market price of genuine products, the total value of the goods was 65,388 RMB, and the illegal income was found to be 410 RMB. The behavior of the parties violated Article 57 of the Trademark Law. On March 16, 2022, the Anshan Municipal Market Supervision Bureau imposed administrative penalties in accordance with the law, confiscated infringing goods and illegal gains, and imposed a fine of 263,192 RMB. 

  Mobile phone accessories are commodities that are frequently subject to trademark infringement. Due to the limited of ordinary consumers to detect fakes, illegal operators deceive consumers to accept their goods or services, which not only infringes the legitimate rights and interests of the trademark owner, but also increases the security risks in the use of mobile phones.  The investigation and punishment of this case have severely cracked down on infringements and violations, and safeguarded the interests of rights holders and consumers. 

  4. Jiangxi Anyuan County Market Supervision Bureau investigated and punished the case of Jiangxi Yuhui Industrial Co., Ltd. infringing the exclusive right of registered trademark 

  Anyuan County Market Supervision Bureau received a report from AkzoNobel (Shanghai) Co., Ltd., claiming that Jiangxi Yuhui Industrial Co., Ltd. used “ICI Professional”  exterior wall paint in the “Scholarly Park·Yuefu” community in Anyuan County infringing its exclusive rights to their registered trademarks  and the Bureau immediately went to the site to conduct investigations. 

  Law enforcement officers found 324 barrels of  paint with the words “ICI Professional” printed on the them, which were identified as counterfeit products. After investigation, the parties were responsible for the construction of the exterior walls of the residences in the “Scholarly Park·Yuefu” residential area in Anyuan County. In order to reduce the construction cost, the party purchased 380 barrels of  paint with the words “ICI Professional” at the price of 105 yuan per barrel. The party did not check the relevant certification documents of the product. As of the incident, the parties have used 56 barrels, which are deemed to have been sold. According to the agreed contract price of 120 RMB/barrel, the value of the goods involved is 45,600 RMB. The behavior of the parties violated Article 57 of the Trademark Law. On May 27, 2021, the Anyuan County Market Supervision Bureau issued an administrative penalty in accordance with the law, ordering the parties to immediately stop the infringement, confiscating 324 barrels of infringing goods and fined 50,000 RMB. 

  In this case, in order to reduce costs, the parties used goods infringing the exclusive right to use a registered trademark in the construction activities of contracting labor and materials, which constituted an illegal act of selling goods infringing the exclusive right to use a registered trademark. The investigation and handling of this case effectively cracked down on the illegal acts of trademark infringement in processing and contracted business activities, and safeguarded the legitimate rights and interests of the trademark owner. 

  5. The Nanning Municipal Market Supervision Bureau of Guangxi Zhuang Autonomous Region investigated and punished the case of infringing the exclusive right of registered trademark by Nama Gas Station of Nanning Zhongwei Petrochemical Co., Ltd. 

After receiving a report from Sinopec Sales that Nanning Zhongwei Petrochemical Co., Ltd.’s Nama gas station had infringed upon its right to the exclusive use of a registered trademark, the Nanning Market Regulatory Bureau immediately conducted an investigation.

Upon investigation, the party concerned did not use its trade name on its gas station hood in a standard way, but used the logo, in a spread out manner which constituted a similar situation to the registered trademark of Sinopec Sales Co., Ltd. Moreover, the overall look of the gas station and the employees’ clothes were similar to the gas stations and the employees’ clothes of Sinopec Sales Co., Ltd. The Market Supervision Bureau of Nanning Municipality entrusted a professional company to carry out a questionnaire survey on the similarity between the two , and 75.93% of the respondents believed that the two are similar. The acts of the parties violated the provision of Article 57 of the Trademark Law. On August 20, 2021, the Market Supervision Bureau of Nanning Municipality legally imposed an administrative penalty, ordering the party concerned to immediately stop the infringing act and impose a fine of 600,000 RMB.

With the increasingly fierce market competition, some illegal merchants try to imitate other people’s trademarks causing consumers confusion and gain competitive advantage. This case is a typical case of trademark infringement on services, and involves the gas station retail industry which has close contact with consumers and is typical. Law enforcement officers, faced with complicated case circumstances, launched investigations into ordinary consumers potential confusion, broke through the difficulties in case handling, and ensured the smooth progress of case investigation and handling.

  6. The Market Supervision Bureau of Qiaocheng District, Bozhou City, Anhui Province investigated and dealt with the case of Anhui Jinkou Liquor Co., Ltd. using the word “well-known trademark” in advertising and exhibition 

  The Market Supervision Bureau of Qiaocheng District, Bozhou City received a clue that Anhui Jinkou Wine Industry Co., Ltd. used the words “Golden Jar” and “Well-known Trademark” for advertising and exhibitions, and immediately conducted an investigation. 

  After investigation, in order to promote the “Golden Jar” liquor produced by the parties, the parties listed the “well-known trademark” at the Nanjing Food and Drinks Fair on November 21, 2020 and at the 21st Anhui Food and Drinks Fair on November 27, 2020. The words were used for advertising, exhibitions. The conduct of the parties violated Article 14 of the Trademark Law of the People’s Republic of China. On February 10, 2021, the Market Supervision Bureau of Qiaocheng District, Bozhou City issued an administrative penalty in accordance with the law, ordered the parties to make corrections immediately, and imposed a fine of 100,000 RMB. 

  A “well-known trademark” refers to a trademark that is well known to the relevant public and is given extended protection different from ordinary trademarks. “Well-known trademark” is not an honorary title, but a factual determination of the popularity of the trademark by the relevant departments according to actual needs. Since “well-known trademarks” usually carry good reputation, some rights holders display them as a means of promoting products or services to gain market competitiveness. China’s “Trademark Law” clearly stipulates that producers and operators shall not use the words “well-known trademark” on commodities, commodity packaging or containers, or in advertising, exhibitions and other commercial activities. The investigation and handling of this case prevented the abuse of the rights of “well-known trademarks”, helped to guide producers and operators to correctly understand the “well-known trademark” system, and urged the right holders to obtain market competitiveness by relying on the quality of products, services and reputation. 

  7. The Market Supervision Bureau of Weining Yi, Hui and Miao Autonomous County of Guizhou Province investigated and dealt with the case of Zhang Mou’s unauthorized manufacture of others’ registered trademark logos 

  The Weining Autonomous County Market Supervision Bureau received a report that someone in a private house in Zhaoshan Village, Shanqiao Street, Weining County, produced a large number of trademarks for cigarette filter paper packaging paper, and immediately cooperated with the county public security organ and the tobacco department to inspect the private house according to law. 

  After investigation, it was determined that Zhang rented a private house to engage in the printing of trademark logos on the outer wrapping paper of cigarette filter paper, and the Bureau seized more than 100 million trademark logos such as “Yunyan”, “Hongtashan” and “Hongmei” on the spot. After contacting the relevant trademark owner, it was confirmed that Zhang had not been entrusted or authorized to print the trademark, and the trademark logo seized was made by Zhang without authorization. Zhang’s behavior violated Article 57 of the “Trademark Law” and constituted an infringement of the exclusive right to use a registered trademark. Due to the huge number of infringing trademarks involved, Zhang’s behavior was suspected of constituting a crime. On February 22, 2021, the Weining County Market Supervision Bureau transferred the case to the public security organ. 

  In accordance with the relevant regulations such as the Measures for the Administration of Trademark Printing, a trademark printing unit that undertakes the trademark printing business shall check the certification documents and trademark drawings of the trademark printing client. In this case, in order to obtain profits, the parties took desperate risks and printed trademarks in ordinary houses without authorization, and the means were concealed. The market supervision department and relevant departments acted in a timely manner to prevent the infringing logos from entering the market, cut off the chain of infringement, and safeguarded the legitimate rights and interests of trademark owners and consumers. 

  8. The Baokang County Market Supervision Bureau of Hubei Province investigated and dealt with a case of Meng intentionally providing assistance for infringing the exclusive right to use the trademark of others 

In the case of counterfeiting registered trademarks, in which Yang and Wang (given names withheld by the Public Security Bureau of County) were investigated and handled jointly by the Market Supervision Bureau of Baokang County and the Public Security Bureau of County, the parties concerned were found to be suspected of facilitating the acts of counterfeiting registered trademarks of the aforesaid two persons, and investigation was immediately launched.

Upon investigation, the parties clearly knew that it was necessary to inspect the external packaging of commodities and ask for relevant certificates from the manufacturers and powers of attorney. However, when they accepted the entrustment to make the spirits bottles of Hubei Yaozhi He Chuwengquan Wine Co., Ltd., they did not ask for the powers of attorney and relevant qualification certificates from the relevant personnel. They contacted and organized the relevant manufacturers to make bottles similar to the prints of Yaozhihe 1988 wine bottles, bottle caps, and bottles by copying physical objects, which provided convenient conditions for Yang and Wang to counterfeit registered trademarks. The acts of the parties violated the provision of Article 57 of the Trademark Law. On April 20, 2021, the Market Supervision Bureau of Baokang County legally imposed an administrative penalty, ordering the party concerned to immediately stop the infringement and imposing a fine of 170,700 RMB on the party concerned.

In this case, a party provides assistance to another person when the latter clearly knows that the latter has committed a trademark infringement, which is a necessary condition for the success of the former and also an infringement upon the exclusive right to use a registered trademark. The investigation and handling of this case has effectively protected the rights and interests of trademark right holders and maintained the market order of fair competition.

  9. The Nanjing Municipal Market Supervision Bureau of Jiangsu Province investigated and punished the case of Nanjing Jianbo Protective Products Co., Ltd. infringing the exclusive rights of the Olympic logo 

  During the investigation of a Nanjing company infringing the exclusive rights of the Olympic logo, the Nanjing Municipal Bureau of Market Supervision found that the infringing products involved in the case were provided by the party concerned, Nanjing Jianbo Protective Products Co., Ltd., and conducted an investigation into the parties. 

  After investigation, the parties purchased a total of 158,000 masks printed with the Olympic rings through the 1688 platform and offline channels from July 31 to August 2, 2021, and subcontracted and packaged them, of which 98,000 masks were packaged. The factory name and address of the party concerned were marked on the bag, and the other 60,000 masks were printed on the packaging bag with the name of the factory of others without authorization, and then the packaged masks were provided to a company in Nanjing for sale, with a turnover of 57,850 RMB. The parties sold masks with the Olympic logo without permission, which violated Article 4 of the Regulations on the Protection of the Olympic Logo, and violated the exclusive right of the Olympic logo. Their behavior of marking the name of the factory of others on the product packaging also violated the “Product Quality Law” relevant provisions. On November 4, 2021, the Nanjing Municipal Market Supervision Bureau imposed administrative penalties in accordance with the law, ordered the parties to correct their illegal acts immediately, and imposed a fine of 180,000 RMB. 

  The investigation and punishment of this case coincided with the booming sales of “Olympic masks.” Law enforcement officers were keen to find clues to the violation and secure the evidence in a timely manner, and resolutely cracked down on the violations, which protected the interests of the owners of the Olympic symbols, and showed a good image of China’s strict protection of Olympic intellectual property rights.  

  10. The Market Supervision Bureau of Fuling District, Chongqing Municipality investigated and punished the case of Fuling Mustard Group Co., Ltd. infringing the exclusive rights of the Olympic logo 

  The Fuling District Market Supervision Bureau received a tip that Chongqing Fuling Mustard Group Co., Ltd. was suspected of infringing the exclusive rights of the Olympic logo, and then conducted an investigation. 

  Upon investigation, in order to enhance the awareness of the enterprise, the parties concerned posted on their Weibo and website commercial publicity pictures with contents such as “Tokyo Olympic Games”, the pictures not only containing their products and brand logos, but also containing contents such as “Cheer for Chinese Athletes, Jointly Look forward to the Olympic Games and Tokyo Olympic Games”. By releasing the publicity pictures containing “Tokyo Olympic Games” and other contents on its microblog or website without the permission of the right holder of the Olympic symbols, the party concerned violated the provisions of Article 4 of the Regulation on the Protection of Olympic Symbols and infringed upon the exclusive right to the Olympic symbols. On November 12, 2021, the Market Supervision Bureau of Fuling District rendered an administrative penalty according to law, ordering the party concerned to immediately stop the infringement, and imposing a fine of 150,000 RMB.

According to the Regulation on the Protection of Olympic Symbols, the Olympic Five-ring Pattern Symbol, the Olympic Flag, the Olympic Motto, the Olympic Emblem, the Olympic Song and the exclusive names of Olympic Committee, Olympia, the Olympic Games and the abbreviations thereof, all belong to the Olympic Symbols and shall be protected according to law. No one may use the Olympic symbols for commercial purposes without the permission of the right owners of the Olympic symbols. The market supervision department shall severely investigate and punish the acts infringing upon the exclusive rights of the Olympic symbols to create a favorable environment for the successful holding of the Winter Olympics in China.

  11. The Foshan Municipal Market Supervision Bureau of Guangdong Province investigated and dealt with the patent counterfeiting case of Foshan Aijia Sanitary Products Co., Ltd. 

  Foshan Municipal Market Supervision Bureau received tips that Foshan Aijia Sanitary Products Co., Ltd. was suspected of counterfeiting patents, and immediately investigated the parties involved. 

  After investigation, it was determined that the parties engaged in the production  of diapers. Although a company in Chongqing authorized the use of “a non-woven fabric and its production process” technology, the technology was in the substantive examination stage of the patent application at that time, and the patent right had not been granted. The parties did not perform special processing on the purchased non-woven fabrics, the whole processing process did not use the above-mentioned technologies of the Chongqing company, and the purchased non-woven fabrics did not use the above-mentioned technologies. As of the incident, the parties have delivered 130 boxes of Qipin brand diapers and 170 boxes of Anchen brand diapers to the Chongqing company. The two products were sold for 68,202.6 RMB. The actions of the parties violated the provisions of Article 84, Paragraph 1 of the Implementing Regulations of the Patent Law of the People’s Republic of China, and constituted patent counterfeiting. On August 4, 2021, the Foshan Market Supervision Bureau issued an administrative penalty in accordance with the law, ordered the parties to make corrections immediately, removed the patent marks on the 216 boxes of products that were not sold in stock, confiscated 68,202.6 RMB of illegal gains, and imposed a fine of 68,202.6 RMB. 

  In this case, the parties used patent applications that have not yet been granted patent rights as patents for publicity, and did not use relevant technologies in the products, misleading consumers and obtaining illegitimate benefits. The investigation and punishment of this case deterred the act of counterfeiting patents, and helped guide and standardize the behavior of patent marking. 

  12. The Beijing Haidian District Market Supervision Bureau investigated and dealt with the case of Beijing Zhuoyi Huizhong Intellectual Property Agency Co., Ltd. disrupting the order of the trademark agency market by improper means 

  Haidian District Market Supervision Bureau received clues that Beijing Zhuoyi Huizhong Intellectual Property Agency Co., Ltd. was suspected of illegally engaging in trademark agency, and immediately conducted an investigation. 

  Upon investigation, the party concerned signed a trademark agency service contract with the applicant. After submitting application materials for trademark registration,  the client inquires about whether the application for trademark registration was successful, the party concerned has sent to the client a notice of rejection issued by the trademark registration examination authority and other relevant materials and has indicated that it is necessary to re-pay the relevant fees to make an appeal. In their communications with the client on WeChat, the parties made promises on several occasions such as “If we use the materials written by the chief lawyer, we can successfully pass the review” and “If we find a competent chief lawyer to write materials, the trademark can be issued without fail”, and mentioned on many occasions such contents as “It is certain that we will regret to abandon the review.” The acts of the parties violated Article 68 of the Trademark Law and constituted acts of disrupting the order of the trademark agency market by improper means. On September 2, 2021, the Haidian Market Supervision Bureau decided to impose an administrative penalty according to law, which involved a warning to the party concerned and a fine of 20,000 RMB.

  An application for registration of a trademark must meet the relevant prescribed conditions before it can pass the examination. In this case, as a professional organization acted as  trademark agency, the party concerned should be aware of the relevant regulations on trademark agency, but made false promises to the client, which harmed the interests of the client and disrupted the normal order of the trademark agency market, and should be punished. 

  13. The Tianjin Hongqiao District Market Supervision Bureau investigated and punished the case of Tianjin Qichengxintai Intellectual Property Agency Co., Ltd. disrupting the order of the trademark agency market by improper means 

  The Market Supervision Bureau of Hongqiao District of Tianjin Municipality received the transfer clues and relevant tip-off materials, which reflected that Tianjin Enterprise Chengxintai Intellectual Property Agency Co., Ltd. was suspected of having infringed upon another company’s trade secrets in the process of providing trademark agency services, and immediately analyzed, researched the evidence and conducted investigations.

  Upon investigation, no suspected infringement of trade secrets as mentioned in the reporting materials was found, but the parties accepted the entrustment of a company with conflict of interests in the same trademark case, and solicited business in a misleading manner. The acts of the parties violated the provisions of Article 88 of the Regulation on the Implementation of the Trademark Law and constituted acts of disrupting the order of the trademark agency market by improper means. Zhang and business commissioner Zheng, who were in charge of the business of the company, were directly responsible for the aforesaid illegal acts. On July 6, 2021, the Market Supervision Bureau of Hongqiao District legally imposed administrative penalties, fining 25,000 RMB on the company, 15,000 RMB on Zhang, and 10,000 RMBon Zheng.

  In this case, the party’s violation of law as a professional institution providing trademark agency services was very covert. The market regulatory authority has effectively found out the facts without missing any clues to the violations, seriously dealt with the companies involved and the relevant directly liable persons, and caused powerful warnings and deterrents.

  14. The Xiamen Municipal Market Supervision Bureau investigated and dealt with the case of Xiamen Sanjiusan Technology Co., Ltd. disrupting the order of the trademark agency market by improper means 

  The Xiamen Municipal Market Supervision Bureau received tips indicating that Xiamen Sanjiusan Technology Co., Ltd. was suspected of illegal acts of trademark agency, and immediately launched an investigation. 

  After investigation, Xiamen Sanjiusan Technology Co., Ltd. applied for the registration of 61 trademarks such as “N” and “Global Franchise Network”. There was a situation of “applying for the same trademark for the same or similar goods or services for different clients”. Due to the exclusivity of trademark registration, the same trademark can only be successfully registered for the same or similar goods and services. The act of applying for the registration of the same trademark for different clients not only damages the interests of the client, but also consumes trademark examination resources. The behavior of the parties violated Article 4 of “Several Provisions on Regulating the Behavior of Trademark Application and Registration” and disrupted the order of the trademark agency market. On March 30, 2021, the Xiamen Municipal Market Supervision Bureau imposed administrative penalties in accordance with the law, ordered the parties to make corrections, and imposed a warning and a fine of 23,500 RMB. 

  In order to standardize the order of trademark application and registration, the State Administration for Market Regulation issued the “Regulations on Regulating the Behavior of Trademark Application and Registration”, which clarified the specific circumstances of illegally applying for trademark registration. In this case, the party, as a professional trademark agency, still carried out the act when it should have known that its agency act was illegal, disrupting the industry order, and the party and the responsible person should be punished. 

  15. The Sichuan Provincial Market Supervision Bureau investigated and dealt with the case of Sichuan Delong Trademark Agency Co., Ltd. disrupting the order of the trademark agency market by improper means 

  Sichuan Provincial Market Regulatory Bureau received a tip that Sichuan Delong Trademark Agency Co., Ltd. was suspected of fabricating historical materials in its application for the trademark for “Guanmen Hongmei” geographic indication  and immediately launched an investigation.

  It was found upon investigation that during the course of applying for the registration of the “Guanmen Hongmei” geographic indication trademark on behalf of the party concerned, because the application for registration of the “Guanmen Hongmei” geographic indication trademark pneeded evidence on the objective existence of and the reputation of “Guanmen Hongmei”, the person in charge of the party concerned, He, was able to pass the examination of the application for the “Guanmen Hongmei” geographic indication trademark, by tampering with the relevant content of the Nanjiang County Logo, and submitted false evidence materials regarding the objective existence of “Guanmen Hongmei” geographic indication and its reputation. Upon material examination, the trademark registration examination authority found that the materials submitted by the party were inconsistent with the content recorded in the Nanjiang County Chronicles collected by the State Book and Literature Collection Institution, and rejected the trademark application on August 6, 2021. The party disguised facts, provided false evidence, and disrupted the order of the trademark agency market by improper means, and violates Article 27 of the Trademark Law and Article 88 of the Regulation on the Implementation of the Trademark Law. On January 27, 2022, the Sichuan Provincial Market Supervision Bureau imposed an administrative penalty according to law, ordering the party concerned to immediately correct the illegal act and impose a fine of 40,000 RMB on the party concerned and 20,000 RMBon the person in charge and the directly liable person, He.

  Strictly cracking down on illegal acts in the process of trademark registration application is an important content of the intellectual property law enforcement of market regulatory departments. This is a case regarding applying for the registration of a geographical indication certification trademark on behalf of clients, in which a party concerned submits false materials for the purpose of obtaining the trademark registration by fraud, which has disturbed the order of the trademark agency market and shall be severely punished according to law.

  16. The Shanghai Songjiang District Market Supervision Bureau investigated and dealt with Mai Qian Intellectual Property Agency (Shanghai) Co., Ltd. and other malicious applications for trademark registration 

  The Market Supervision Bureau of Songjiang District received the clues of delivery, which reported that Maiqian Intellectual Property Agency (Shanghai) Co., Ltd. colluded with its affiliated company to hoard trademarks for sale, and immediately launched an investigation.

  It was found upon investigation that from 2018, the legal representative of Mai Qian Intellectual Property Agency (Shanghai) Co., Ltd. persuaded his relatives and friends to successively register six affiliated companies by sharing trademark assignment fees and represented the aforesaid companies in applying for registered trademarks, and contacted a third party through the Internet platform to assign registered trademarks as a means of making profits. From November 1, 2019 to the date of issuance of this Notice, Mai Qian Intellectual Property Agency (Shanghai) Co., Ltd. applied for the registration of 1,058 registered trademarks for 6 affiliated companies, successfully registered 504 registered trademarks, transferred 32 trademarks, and obtained illegal proceeds of 24,250 RMB. Mai Qian Intellectual Property Agency (Shanghai) Co., Ltd.’s acts violated Article 19 of the Trademark Law, and its affiliated companies violated Article 4 of the Trademark Law and Article 3 of the Several Provisions on Regulating the Application for Trademark Registration. On December 28, 2021, the Market Supervision Bureau of Songjiang District legally imposed an administrative penalty, ordering the party concerned to immediately make correction, confiscating illegal gains of 24,250 RMB and imposing a fine of 165,000 RMB.

  In this case, the parties did not intend to use the trademarks but instead to hoard trademarks in large quantities and sell them, improperly occupied public resources, and disturbed the order of the trademark registration application market. The investigation and handling of this case is conducive to guiding the return of trademark registration applications to the source of rules for purposes of use and maintaining a sound order of trademark registration applications.

  17. Shenzhen Market Supervision Bureau Bao’an Branch investigated and dealt with a malicious application for registered trademark by Pan 

  According to the work deployment of Shenzhen Market Supervision Bureau, Bao’an Branch investigated the applicant Pan Mou who was suspected of maliciously applying for the registration of the “Quanhongchan” (an Olympic athlete) trademark. 

  After investigation, Pan entrusted Shenzhen Huangjia Intellectual Property Co., Ltd. to apply for the registration of the “Quanhongchan” trademark in his own name, covering 65 kinds of goods or services in six categories. As the legal representative of Shenzhen Huangjia Intellectual Property Co., Ltd., Pan is specialized in trademark registration agency work. Without the authorization of Quanhongchan and without actually carrying out relevant business activities, Pan maliciously applied for the registration of multiple “Quanhongchan” trademarks, infringing upon the rights of others’ names and their legitimate rights and interests, and causing adverse social impacts. The behavior of the parties violated Article 7 of the Trademark Law of the People’s Republic of China and Article 3 of the Several Provisions on Regulating the Behavior of Trademark Application for Registration. On October 26, 2021, the Bao’an Branch issued an administrative penalty in accordance with the law, ordered the parties to make corrections immediately, gave a warning, and imposed a fine of 5,000 RMB. 

  Olympic athletes sweat and win glory for the country in the Olympic arena, but some trademark applicants and trademark agencies, for their own selfish interests, frequently squat on hot names and maliciously register trademarks, causing adverse social impact. The investigation and handling of the case responded to social concerns in a timely manner. Whether it is an individual, an enterprise or a trademark agency, any malicious application for trademark registration will be punished according to law. 

  18. The case of Junding (Yantai) Intellectual Property Agency Co., Ltd. carrying out the patent agency business without authorization by the Yantai City Market Supervision Bureau of Shandong Province 

  Yantai Market Supervision Bureau received clues that Junding (Yantai) Intellectual Property Agency Co., Ltd. carried out patent agency business without authorization, and immediately conducted an investigation. 

  After investigation, it was determined that 4 enterprises entrusted Junding (Yantai) Intellectual Property Agency Co., Ltd. to compile and declare patent materials in order to obtain subsidies for high-tech enterprises from the local government. The parties provided patent agency services for 4 clients by signing the “Intellectual Property Cooperation Agreement” without obtaining the practicing license of a patent agency, involving a total of 23 patent applications and obtaining 40,000 RMB of illegal income. The parties engaged in patent agency business without authorization, which violated Article 9 of the Regulations on Patent Agency. On July 13, 2021, the Yantai Municipal Market Supervision Bureau issued an administrative penalty in accordance with the law, ordering the parties to immediately stop the illegal behavior, confiscate the illegal income of 40,000 RMB, and impose a fine of 80,000 RMB. 

  To engage in patent agency business, a patent agency practice license shall be obtained. The behavior of unqualified patent agency disrupts the market order and encourages abnormal patent applications that are not aimed at innovation. The investigation and punishment of this case timely stopped the illegal acts of “black agency” and helped to regulate the patent application behavior from the source. 

  19. The Hunan Provincial Market Supervision Bureau investigated and dealt with the case of Hunan Xieyuan Intellectual Property Service Co., Ltd. carrying out the patent agency business without authorization 

  The Hunan Provincial Market Supervision Bureau received  clues, saying that Hunan Xieyuan Intellectual Property Service Co., Ltd. was not qualified to carry out patent agency activities, and then checked. 

  After investigation, it was determined that the parties signed service contracts with 9 companies including a Hunan Inspection and Testing Co., Ltd. from August 6, 2019 to May 20, 2021, respectively, without obtaining a patent agency practice license, representing them in filing 55  patent applications and obtained 29,850 RMBin illegal income. The behavior of the parties violated Article 9 of the Patent Agency Regulations. On January 5, 2022, the Hunan Provincial Market Supervision Bureau issued an administrative penalty in accordance with the law, ordering the parties to immediately stop the illegal behavior, confiscate the illegal income of 29,850 RMB, and impose a fine of 29,850 RMB. 

  Patent agency work is an important part of the patent work system and plays an important role in regulating patent applications and improving patent quality. In order to strengthen the supervision of the patent agency industry, the “Regulations on Patent Agency” stipulates that to engage in patent agency business, a patent agency practice license shall be obtained. The investigation and punishment of this case have created “shock and awe” over the relevant illegal acts, which will help promote the healthy and sound development of the patent agency industry and maintain the normal order of the patent agency industry. 

  20. Gansu Provincial Market Supervision Bureau investigated and dealt with the case of Lanzhou Hechuang Intellectual Property Agency Service Co., Ltd. carrying out patent agency business without authorization 

  On April 20, 2021, the Gansu Provincial Market Supervision Bureau received a report that Lanzhou Hechuang Intellectual Property Agency Service Co., Ltd. did not have agency qualifications but carried out patent agency business, and immediately launched an investigation. 

  After investigation, it was determined that from May 2019 to March 2021, the parties carried out patent agency business without obtaining the practice license of a patent agency, and submitted patent application documents in the name of other agencies. It represented seven entities and filed E18 patent applications, charged a patent agency fee of 88,200 RMB and illegal income of 80,740 RMB. The behavior of the parties violated Article 9 of the Patent Agency Regulations. On December 23, 2021, the Gansu Provincial Market Supervision Bureau issued an administrative penalty in accordance with the law, ordering the parties to stop the illegal behavior, confiscate the illegal income of 80,740 RMB, and impose a fine of 161,480 RMB. 

  In this case, the parties engaged in patent agency business without obtaining a license to practice as a patent agency, disrupting the order of the patent agency industry. Law enforcement officers check the relevant patent applications one by one to determine the facts of violations, and while cracking down on illegal acts in accordance with the law, popularize relevant legal knowledge to relevant units, which is conducive to promoting the standardized development of the patent agency industry. 

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.