Recognition of “Registration Obtained by Other Improper Means” Under the Trademark Law
——Li Longfeng v. Trademark Review and Adjudication Board and Sanya Haitangwan Management Committee
[Syllabus]
Under Article 41 (1) of the Trademark Law of the People’s Republic of China (as amended in 2001), “registration obtained in any other improper means” refers to the acquisition of a registered trademark, not by fraud, but in any means that disturbs the trademark registration order, impairs public interests, improperly occupies public resources or otherwise seeks unjust profits; to apply for a registered trademark, a civil subject should have the real intent to use.
[Case No.] Supreme People’s Court (2013) ZXZ No. 41 & (2013) ZXZ No. 42
[Cause of Action] Trademark administrative dispute
[Collegial Panel Members] Xia Junli Yin Shaoping
Dong Xiaomin
[Keywords] Trademark registration, other improper means
[Relevant Legal Provisions] Articles 4 and 41 of the Trademark Law of the People’s Republic of China (as amended in 2001)
[Basic Facts]
In the retrial case of Li Longfeng v. the Trademark Review and Adjudication Board of the State Administration for Industry & Commerce (hereinafter referred to as TRAB) and Sanya Haitangwan Management Committee (hereinafter referred to as Haitangwan Management Committee) as the third party in the first instance in respect of a trademark administrative dispute l, on June 8, 2005, Li Longfeng registered Trademark No. 4706493 “Haitangwan” in Type 36: Real Estate Lease, Real Estate Management, Residence (Apartment) and other Services, and also registered Trademark No. 4706970 “Haitangwan” in Type 43: Residence (Inns and Boarding House), Tourist Homes, Hotels, Restaurants and Other Services (i.e. the two trademarks at issue). Under the provisions of Articles 31, 41(1) and 10 of the Trademark Law of the People’s Republic of China, Haitangwan Management Committee applied to TRAB a request for cancellation of the registration of the Disputed Trademarks. TRAB, through SPZ (2011) No. 13255 Decision on Trademark Dispute over Trademark No. 4706493 “Haitangwan” (“No. 13255 Decision”) and SPZ (2011) No. 12545 Decision on Trademark Dispute over Trademark No. 4706970 “Haitangwan” (“No. 12545 Decision”), ruled to respectively cancel the two “Haitangwan” trademarks. Li Longfeng found it dissatisfactory and brought administrative lawsuits against the aforementioned decisions respectively. On first instance, Beijing No. 1 Intermediate People’s Court ordered to overrule No. 13255 Award and No. 12545 Award. TRAB and Haitangwan Management Committee appealed. On second instance, the Beijing High People’s Court ordered to overrule the first instance judgment and uphold No. 13255 Award and No. 12545 Award. Li Longfeng applied to the Supreme People’s Court for retrial. On August 12, 2013, the Supreme People’s Court denied the application for retrial from Li Longfeng.
Holding
TRAB, through SPZ (2011) No. 13255 Decision on Trademark Dispute over Trademark No. 4706493 “Haitangwan” and SPZ (2011) No. 12545 Decision on Trademark Dispute over Trademark No. 4706970 “Haitangwan”, ruled to cancel the two “Haitangwan” trademarks respectively. Li Longfeng found it dissatisfactory and brought administrative lawsuits against the aforementioned decisions respectively. On first instance, Beijing No. 1 Intermediate People’s Court ordered to overrule No. 13255 Award and No. 12545 Award. TRAB and Haitangwan Management Committee appealed. On second instance, the Beijing High People’s Court ordered to overrule the first instance judgment and uphold No. 13255 Award and No. 12545 Award. Li Longfeng applied to the Supreme People’s Court for retrial. On August 12, 2013, the Supreme People’s Court denied the application for retrial from Li Longfeng.
[Reasoning]
The Supreme People’s Court holds that: under Article 41 (1) of the Trademark Law of the People’s Republic of China (as amendment in 2001), if the registration of a registered trademark is obtained by fraud or any other improper means, any organization or individual may petition to TRAB for an order to cancel such registration. To review and determine whether the Disputed Trademarks are “registered in any other improper means”, it is necessary to consider whether the registration is acquired, not by fraud, but in any means that disturbs the trademark registration order, impairs public interests, improperly occupies public resources or otherwise seeks unjust profits. Article 4 of the Trademark Law of the People’s Republic of China says that any natural person, legal person, or other organization that needs to obtain the proprietary rights to use a trademark for the goods or services he produces, manufactures, processes, selects, or markets shall file an application for registration of the trademark of the goods with the Trademark Office. It can be seen from the forgoing article that to apply for a registered trademark, the civil subject should have the real intent for its own use, and it should be reasonable or legitimate to apply for the registered trademark. According to the facts collected and ascertained by TRAB and the original court, prior to Li Longfeng’s application for registering the Dispute Trademarks, “Haitangwan” has been used and promoted by relevant governmental authorities of Hainan Province and become a publicly-known name of resort area in Sanya City and the name of a major comprehensive development project with clear meaning and designation. In the media interview, Li Longfeng also made it clear that he registered the trademark because he believed that the mark would be very famous when he learnt on a Hong Kong newspaper that renowned entrepreneurs from Hong Kong would participate in the development of the Haitangwan Project and that the trademark would have high value. As an individual, Li Longfeng registered the trademarks at issue not only in Type 36: Real Estate Lease, Real Estate Management, Residence (Apartment) and other Services and Type 43: Residence (Inns and Boarding House), Tourist Homes, Hotels, Restaurants and Other Services, but also in other types of goods and services. In addition, Li Longfeng registered more than 30 trademarks, such as “Xiangshuiwan” and “Yelinwan”, in various types of goods and services, and some of them are related to place names and scenic spot names in Hainan Island that are known to the public. Li Longfeng exploited the huge influence from governmental authorities’ efforts to promote and market Haitangwan Resort Area and its development project, squatted several trademarks related to “Haitangwan”, and registered a large number of other trademarks without justifiable reasons. His conducts show that he lacks the intent to use the mark and does not have the justification required to register a trademark, and constitutes improperly occupying public resources and disturbing trademark registration order.
