07 April 2021
Wang Lei, a local getai singer, has been making a killing selling frozen seafood through Facebook live. The 60-year-old, who is now recognised as 'Mai Yu Ge' ('Fish Selling Bro') or the 'Fishmonger King,' has amassed a slew of lucrative sponsorship deals and a legion of followers, including several well-known celebrities.
It's no wonder, then, that he wanted to cash in on his celebrity by launching his own line of merch called "Fish Selling Bro."
In July 2020, he filed trademark applications for his logo in Malaysia, China, Taiwan, and Singapore, in preparation for the launch of his own coffee brand. His hopes, though, were thwarted when he discovered that he had been beaten to the trademark in China. By one month.
“Surprisingly, or rather, unsurprisingly, he encounters difficulties due to a prior trademark owned by a Chinese individual, who has registered "Mai Yu Ge & the image" on certain products,” says Ren Haiyan, Partner and Management Committee Member, Wanhuida Intellectual Property, China. “To Wang Lei, this seems the end of the story, while in a trademark attorney’s eyes, it is only the start of a long fight.”
Haiyan adds that he needs to get back his rights on his “Mai Yu Ge” nickname and on the carton image created about him.
“Meanwhile, if this Chinese individual attempts to stop him from selling his products, he can file a lawsuit to argue about non-infringement and show the bad faith of this person,” she says. “In my view, multiple legal remedies are available and Wang Lei should have a good chance to win. He can claim copyright protection on the carton image if the Indonesian netizen who created it agrees to transfer the right to him, or authorize him to use it and take action, or, he can claim the prior name right of a famous internet celebrity, etc. Besides, he should continue the registration procedure of his own trademark application by appealing against the refusal decision and, at the same time, apply for invalidation of the trademark registered by the Chinese individual in bad faith. All these legal proceedings may take time but Wang Lei’s situation is definitely not hopeless.”
With perhaps the Mai Yu Ge situation happening a bit more often in China due to the booming of internet celebrity business, that trademark squatters watch keenly, the Chinese government is quite aware of this problem and puts substantial efforts on both the legislation and the enforcement to fight against bad faith trademark filings.
“The law has been amended to include the possibility to refuse trademarks when they are filed in bad faith with no intention to use,” says Haiyan. “Case law is evolving and, now, allows the victim of trademark squatting to sue the squatter, once the fad faith registration has been invalidated, and obtain damages compensating for the cost of the administrative procedures and the business losses.”
She gives this advice to those who want to trademark their brand, “Trying to register the brand having a potential economic interest at the very beginning is the best way to avoid possible conflicts. And if the situation turns to be too late, one shoul exhaust all possible legal remedies to defend his/her rights. Rely on professionals and believe in the law.”
Excel V. Dyquiangco
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