Recently a dispute over collective trademarks has aroused heated debate across the Country. Roujiamo, also known as the Chinese hamburger, is one of the most famous street foods in China.
With multiple legends and a long history, Tongguan Roujiamo has become a symbol of the most authentic taste of the beloved snack, born in a small town in Shaanxi Province, East China.
A few months ago, many stores using the name of Tongguan Roujiamo were sued by the Laotongguan Snack Association (hereinafter referred to as the "Association") because of trademark infringement.
The Association was born in 2016 and it is actually registered in the city of Tongguan. The Association has filed and registered the trademark "潼关肉夹馍" (No. 14369120) and based on such trademark raised hundreds of litigations with the aim of collecting damage compensation. What's more, if the sued stores still want to use a name containing Tongguan Roujiamo, according to the claims of the Association, they shall pay royalty for trademark license and subscribe to join the Association.
Many might have noticed that there are countless stores using Tongguan Roujiamo name/trademark all over the country. Virtually, these stores have become an invisible gold mine for the trademark owner, which can enable them to claim compensation through multiple litigations. If they succeed in most of the cases, it will be a lot of wealth.
According to the Trademark Law, a collective trademark mark is a mark registered in the name of a group, association, or any other organization and used in business activities by its members to indicate their membership. Unlike normal trademarks, geographical names can be contained in the collective trademarks.
For a normal trademark, it is a legal pattern to charge and authorize others to use the trademark. However, things are different in this case. Geographical indications shall indicate the place of origin of the goods, which shall not be simply authorized to be used by operators without the certain geographical region.
With more and more disputes aroused on the Internet, one of the judges of the Supreme People's Court indicated that the geographical trademark can be used legally within the scope indicated by geographical indications. In contrast, those who do not meet the conditions for the use of geographical trademark or exceed the geographical scope cannot obtain the qualification to use the geographical trademark by means of trademark license, or membership of the association.
It is also clarified that the geographical trademarks are public resource. The registrant shall be a local non-profit group, association or other organization, which shall be legal and self-disciplined, and shall exercise litigation rights reasonably.
We take this chance to recall that, in June 2021, was published the "Official Reply of the Supreme People's Court on Issues concerning the Claim of the Defendant for Compensation for Reasonable Expenses on the Ground that the Plaintiff Abuses Rights in the Action of Infringement on Intellectual Property Rights".
The announcement of Roujiamo Association
It is stipulated that in the intellectual property infringement lawsuit, if the plaintiff's lawsuit constitutes an abuse of rights and damages its legitimate rights and interests as stipulated by law, and requests the plaintiff to compensate for the reasonable expense such as lawyer's fees, transportation expenses, board and lodging expenses paid by the defendant due to the lawsuit, the people's court shall support it according to law.
China National Intellectual Property Administration has already requested the related departments to investigate the progress of this incident, strengthen the administrative instruction of trademark protection and use. It is necessary to protect the intellectual property and prevent the abuse of the rights.
At present, the Roujiamo Association has stopped this series of action and apologized for the argument. A joint investigation team composed of the Bureau of Commerce, the Bureau of market supervision and administration, the Bureau of industry and information technology and other departments conducted an investigation.
Pepper and chili soup Industry Development Center of Xihua County also issued an announcement to order the association to stop the litigation.
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