Brief introduction to the case
Shenzhen Toten Communication Technology Co., Ltd (hereinafter referred to as "Shenzhen Toten") was established in 2000.Since the establishment of the company in 2000, the trademarks “TOTEN” and “图腾”, the well-known brands in the cabinet industry in China, have been applied for trademark protection in China.
Beijing Toteng Technology Co., Ltd (hereinafter referred to as "Beijing Toteng") established in 2012, changed its name to "Toteng" in 2016. "Beijing Toteng" declared itself as the"professional cabinet manufacturer" and "surpasser of cabinet industry" in a prominent position on the official website.
The investigation suggested that “Beijing Toteng” not only conducted unfair competition through the imitation of “Shenzhen Toten”, but also rushed to register a large number of trademarks which are highly similar to the well-known trademarks of “TOTEN” and “图腾”, such as “TOTENG” and“图滕”, to mislead consumers and seek illegitimate interests.
We (STS Junyi Law Firm) initiate legal proceedings on behalf of "Shenzhen Toten" to in accordance with the trademark administrative procedures and civil procedures.
After the first instance, the court alleged that Beijing Toteng Technology Co., Ltd must immediately stop using the name of "Toteng" as well as trademark infringement, change the enterprise name and compensate Shenzhen Toten Communication Technology Co., Ltd for economic losses of 260,000 yuan.
Finally, after the second instance, the court alleged that the application for registration of the "Toteng" trademark of Beijing Toteng Technology Co., Ltd on computer peripheral equipment constitutes the situation of Article 32 of the trademark law, which is bad-faith registration by illicit means of a trademark with a certain reputation already used by another party ”,adjudicating that the trademark “TOTENG” is invalid on computer peripheral equipment goods.
STS’s OPINION
The enterprise should abide by the principle of honesty and integrity. Nevertheless, some illegally operated enterprises not only infringe similar trademarks through preemptive registration of similar trademarks of prior renowned trademarks, but also implement unfair competition by registering in advance and abusing other enterprises’ already well-known name to mislead consumers and seek illegitimate interests. In accordance with the provisions of Article 6, Paragraph 2, of the Law of the People's Republic of China Against Competition(which is using without permission another person's name with certain influence such as the name (including abbreviations and trade names)of an enterprise the name(including abbreviations)of a social organization or the name(including pseudonyms, stage names and name translations)of an individual),strengthening the legal protection of enterprise name rights is of great significance to protect the legitimate rights and interests of both enterprises and consumers, which can contribute to maintaining the market order of fair competition. However, after all, the enterprise name is endowed with a strong regional nature, thus restricting the legal protection of enterprise name to a certain degree. Therefore, for stronger protection of names across regions, the name should first be registered as a trademark, so that it can be protected by the Trademark law and the Law of the People's Republic of China Against Competition at the same time.