Preemptive registration of trademarks is a problem plaguing many colleges and universities. The full name and abbreviation of many colleges and universities are not only registered preemptively in other categories, but also in categories of education, training, research and development. Many colleges and universities also doubt that whether they should register trademarks, how to register trademarks and how to deal with the preemptive registration of trademarks. Below, the author analyzes the registrable form of colleges and universities' trademarks, the situation of preemptive trademarks registration in colleges and universities, the reasons for the emergence of massive preemptive trademark registrations, etc., puts forward effective countermeasures, and further puts forward innovative suggestions based on the shortcomings of the above ways to provide more effective and feasible solutions for the protection of trademarks in colleges and universities.

I. Registrable Forms of Colleges and Universities' Trademarks

At present, there are six main forms of colleges and universities' trademarks that can be registered as follows.

1. Full name of the university, including the full name in English and Chinese

2. Abbreviation of the university, which also includes the abbreviation in English and Chinese

3. School badge

4. Motto

5. Mascot and other markers of campus culture

6. Iconic buildings and attractions

Of the six forms of trademarks, the full name is rarely registered at present, because most colleges and universities are named after the names of the provinces or cities, such as Peking University, Hunan University, Xiangtan University. For this kind of full name, according to Article 10 of the Trademark Law of the PRC, the name of any administrative division at or above the county level may not be used as a trademark. So for the moment, neither for most colleges and universities nor for those who preempt trademarks will register trademarks in the form of the full name.

Currently, preemptive trademark registration is mainly concentrated in three major forms: abbreviation, school badge and iconic buildings.

II. Preemptive Registration of Trademarks in Colleges and Universities

What about the cases of preemptive registration of trademarks in colleges and universities? The author is likely to use a word to describe it, "shocking". Among the cases, For example, Peking University has done relatively well in protecting its trademark, with 1,475 trademarks applied for under the name of "Peking University". We use Peking University's trademark case as a brief introduction to the current situation of preemptive registration of trademarks in colleges and universities. Peking University does not have the exclusive right to use a trademark for its abbreviation "PKU" in the areas of education, consultation and training. Peking University only obtained the exclusive right to use a trademark for the abbreviation of "PKU" in the book publishing and publishing-related category in 2002. But for the education, consultation and training area, only the school badge was registered in 2002.

So why did this happen? Through searching, it was found that as early as 1994, 1995, 1999, and 2000, Peking University Resources, Beidahuang, Beidacang, Alliance PKU, and Peking University Jade Bird had already appeared. Moreover, the applicants for the above-mentioned trademarks were all other entities other than Peking University. According to the trademark registration principle, if similar or identical trademarks have already been registered in the same category, any application for registering similar or identical trademarks shall not be approved. Therefore, Peking University did not have the exclusive right to use the abbreviation of "Peking University" or "PKU" under the education and training category. And in recent years, in each category, the preemptive registration of trademarks in colleges and universities has been more and more intense.

III. Reasons for the Emergence of Massive Preemptive Trademark Registrations

Why is the preemptive registration of trademarks in colleges and universities so common? Especially in recent years, there have been a large number of preemptive registration of trademarks containing the abbreviation of colleges and universities in various categories. What is the cause of the above situation? In fact, it is mainly caused by the huge commercial value of the trademarks of colleges and universities.

Chinese people are very aware of who are the top colleges and universities in the country. The trademark of a college or university is highly recognizable. But at the same time, colleges and universities are not allowed to using their registered trademarks to conduct commercial operations, thus it is difficult for them to realize the commercial value of their trademarks. For general enterprises or those who want to start a business, it is very beneficial for them to expand their market if they can use the abbreviation of a university as their own trademark or enterprise name based on the high recognition of the university's name or abbreviation. They can attract consumers’ attention in a short period of time by using the abbreviation or other names of a university, which is conducive to occupying the market rapidly. It is precisely based on this situation that a large number of trademarks have been preemptively registered.

IV. Effective Countermeasures

So how should we deal with this massive preemptive registration of trademarks in colleges and universities?

According to the author's own experience in intellectual property rights and brand protection for more than ten years, there are four feasible countermeasures as follows.

1.Register trademarks in the key categories

If there are universities whose trademarks have not been registered, based on limited funds, trademarks should be registered at least in the education, training, research and development and other relevant categories.

For colleges and universities whose names are based on "administrative divisions at or above the county level", the registration of the full name is already very difficult, so it is not recommended to do the above attempts, but can be supplemented by abbreviations and badges.

However, it is also very difficult to register the abbreviation of a general university at present. If we have not applied for trademark registration before, the trademark application of others before will lead to great difficulty for registering our own trademark. The above solution is only effective for the universities whose abbreviations or badges have not been preempted.

2.Register a trademark in all categories

Should colleges and universities register their trademarks in all categories?

Based on the author's experience in the field of intellectual property rights, registering a trademark in all categories is a possible way to try. Compared with other ways of intellectual property rights protection, trademark application is the most low-cost and effective way to protect brands. For ordinary universities, registering a trademark in all categories is not too much of a financial burden. And the cost of protection in advance is very low compared to the cost of after-the-fact remedy.

But for universities, registering a trademark in all categories is likely to bring about two other risks:

① The risk of three-year cancellation

What is the three-year cancellation? According to Article 49 of the Trademark Law, "Where a registered trademark becomes a common name of goods on which it is approved to be used or the use of the registered trademark has ceased for three consecutive years without good reasons, any entity or individual may apply to the Trademark Office for cancellation of the registered trademark."

For the general universities, except for the categories of education, training, research and development, trademarks registration for the other categories may still be subject to the risk of being canceled. This is one of the reasons why most colleges and universities do not register their trademarks in all categories.

② The pressure of renewal

According to Article 39 of the Trademark Law, "The period of validity of a registered trademark shall be ten years, commencing from the date of approval of registration."

Article 40, "A trademark registrant intending to continue to use the registered trademark upon expiry of the period of validity shall undergo the renewal formalities within 12 months before expiry according to the relevant provisions. If failing to do so, the trademark registrant may be granted a six-month grace period. The period of validity of each renewal is ten years, commencing from the day after the expiry date of the last period of validity. If the renewal formalities are not fulfilled within the grace period, the registration of the trademark shall be canceled."

Currently, there are some examples in which major trademarks of colleges and universities have been canceled because they failed to undergo the renewal formalities, which further requires colleges and universities to properly manage their intangible assets to avoid losses.

3.File a trademark invalidation or opposition

In view of the situation that a large number of abbreviations or badges with high brand value have been preemptively registered, is it necessary to file a trademark invalidation or opposition? First of all, whether it is an abbreviation or school badge of a university, it is very recognizable and has a very strong direction. If the field of such trademarks being preemptively registered is the most relevant category to the university, such as class-41, 42, etc., it is obvious that the exclusive right to use the trademark should be obtained by filing a trademark invalidation.

But for other categories, if we want to deal with the matter by way of trademark invalidation or opposition, the process may involve the determination of well-known trademarks and the risk of three-year cancellation, which will increase the difficulty and complexity of adducing evidence.

In addition, there are also cases where subjects other than universities have acquired a high degree of recognition by registering and using trademarks, such as "Peking University Resources". For such highly recognized trademarks, it is still very difficult to be handled by trademark invalidation.

4.Safeguard rights actively

At present, some universities have actively used legal means to safeguard their legitimate rights and interests. For instance, Renmin University of China defended its rights against the misuse of its badge, Tsinghua University safeguarded its rights against the misuse of its abbreviation, and both of them have achieved good results. But at the same time, some universities are cautious about whether to safeguard their rights against cross-category trademark infringement. Considering the possibility that the trademarks may be canceled and may not meet the requirements of well-known trademarks, many universities will take a more cautious attitude to protecting their rights, even if they have applied for trademarks in categories other than education.

5.Conduct commercial operation

For the colleges and universities that have registered trademarks in various categories, how should they deal with the restriction on the commercial use of trademarks of colleges and universities, as well as the risk of three-year cancellation?

In view of this situation, there have been some precedents of commercial operation of trademarks in overseas colleges and universities. Is this kind of solution applicable to colleges and universities in China?

The author believes that colleges and universities can try the commercial operation of trademarks in categories other than education, but the risks may outweigh the benefits for colleges and universities. Because for a college or university, its reputation is very important. If the commercial operation of a trademark brings any derogation of its reputation, such an attempt is certainly not worth the cost. Therefore, colleges and universities should uphold a cautious attitude towards the commercial operation of their trademarks.

V. Lawyer’s Advice

The above five measures can not completely improve the situation of preemptive registration of trademarks in colleges and universities, nor can they fundamentally solve the problem of ineffective protection of trademarks in colleges and universities, thus the author puts forward the following four innovative proposals.

1.Reduce the risk of three-year cancellation and open a green channel

In view of the situation that trademarks in colleges and universities need protections while there is a risk of three-year cancellation after registration, the author believes that the Trademark Bureau can consider opening a green channel for the "three-year cancellation" of trademark applications by colleges and universities for their full names and abbreviations, to avoid their trademarks being canceled due to non-use for three years.

2.File the full name and abbreviation

The full name and abbreviation of a college or university are very directional and recognizable. A large number of century-old universities have nurtured many talents, and it is obvious that the names and abbreviations of those universities need to be properly protected compared with the names of stars and other public figures. The author hopes that the Trademark Bureau can establish an effective filing system for the names and abbreviations of colleges and universities, and after making the filing, reject the subsequent emergence of other subjects who apply with the full names and abbreviations of colleges and universities, so as to avoid further deterioration of the preemptive trademark registration.

3.Register a permanent trademark

Perhaps we can consider of making exceptions for colleges and universities to protect their full names and abbreviations in the form of permanent trademarks.

4.Reduce the difficulty and threshold for the recognition of well-known trademarks

In addition to education-related categories, it is very common that the abbreviations of universities and colleges are preemptively registered. Some universities protect their own legal rights and interests through trademark invalidation and litigation. In many cases, the protection and invalidation of trademarks in other categories than education will involve the identification of well-known trademarks. Under the current legal framework, according to Article 9 of the Provisions on the Determination and Protection of Well-Known Trademarks, it is obvious that in many cases, colleges and universities do not meet all the provisions on the determination of well-known trademarks. Based on the high popularity of universities, it is obvious that the mechanical application of the above terms is not in line with basic common sense and will also lead to a large number of colleges and universities ignoring the misuse of their names and no longer having the motivation to defend their rights. On account of the above situation, the author believes that for the difficulty and threshold of well-known trademarks should be appropriately relaxed for the colleges and universities.

The above suggestions are based on the particularity of trademarks of colleges and universities, and the fact that the current method cannot protect their rights effectively. Of course, these suggestions rely on protection at the institutional level, which is difficult to implement. But the author hopes that the above innovative suggestions can provide some new inspiration for the trademark protection in colleges and universities.