DeHeng Lawyers Successfully Defended Client's
Right to "Science Island" Trademark
2020-08-27
Recently, good news about the disputes over the "Science Island" trademark has been reported frequently: the State Intellectual Property Office has invalidated the preemptive registration of the related trademarks of "Science Island" in three rulings, safeguarding the lawful rights of Hefei Institute of Physical Science, Chinese Academy of Sciences (the "Institute"). DeHeng's Hefei Office was entrusted by the Institute in 2018 and assigned Partner Huang Min and lawyer Wang Yongfang to defend the client's right to the famous trademark "Science Island" in the past two years from the initiation to the closure of the case.
In 2002, the Institute and Anhui Changan Electronics (Group) Co., Ltd. jointly set up Hefei Science Island Technology Co., Ltd. (the "Company"), which is run by the Institute. According to the joint venture agreement, the Institute agrees that the Company could use "Science Island" in its name, but retains its ownership of the "Science Island" trademark. After years of continuous use, the "Science Island" trademark has become a well-known trademark.
In 2016, a company in Anhui and a factory in Hefei deliberately applied for the registration of the "Science Island" trademark with the knowledge of the earlier rights of the name "Science Island" and the trademark's existence for the sake of free-riding on famous brand. Their behavior violates the principle of good faith and damages the lawful rights of the Institute.
In Ruling No.18861850 on Request for Invalidation of the "Science Island" Trademark, No.18861919 Ruling on the Request for Invalidation of the "Science Island" Trademark and No.19912911 Ruling Regarding the Request for Invalidation of the "Science Island" Trademark and Graphics, the State Intellectual Property Office held that the registration of the trademark in dispute violated the circumstance (7) of Clause 1, Article 10 of the 2013 Trademark Law: "The following signs shall not be used as trademarks: (7) the sign that is deceptive, and likely to cause public misunderstanding about the quality and other characteristics of the goods or the place of origin", and thereby declared the corresponding trademark invalid.
As the commercial society continues to develop, trademarks are becoming more and more important to enterprises and public institutions. The value of a well-known trademark can reach hundreds of billions of yuan, and legal disputes over trademarks have been increasing year after year. The successful protection of the right to "Science Island" trademark not only reflects the professional competence of DeHeng lawyers in the field of intellectual property rights, but also highlights the importance of trademark protection, which will motivate outstanding research institutes, enterprises and institutions to seek further progress and drive China's scientific undertakings.
