The malicious registration of trademarks refers to those registrations that are committed for the purposes of improperly taking advantage of the market reputation of others. Malicious registration refers to the violation of the principle of good faith, harming the legitimate rights and interests of others and registrations that are committed for the purpose of embezzling public resources. The author of this article, by means of the legal database owned by the Beijing IPhouse Technology Network, which is a leading IP legal data provider, has conducted big data analysis on judgments and summarized the general distribution of malicious registrations within Chinese territory.
Second instance administrative cases
Regarding administrative disputes in relation to the affirmation and authorization of trademarks, China Judgments Online shows, on April 3 2018, that an aggregate number of 10,208 second instance administrative cases were concluded at Beijing Higher People’s Court from January 1 2013 to March 31 2017. Among those cases, 3,634 concerned the malicious registration of trademarks, accounting for 35.6% of the total number.
Regarding the types of disputes, cases involving trademark opposition accounted for 50.7%, cases involving the rejection of trademark registration accounted for 30.3%, cases involving the invalidation of trademarks accounted for 18.85% and cases involving dismissal of the review application accounted for 0.06%.
In relation to the class of goods or services, the following five classes were most affected by malicious registrations: Class 25 (clothing, footwear, headgear), Class 9 (electronic and electric appliances), Class 30 (food, rice, flour), Class 33 (alcoholic beverages) and Class 35 (advertising, business management). Among the five classes, cases involving Class 25 accounted for 15.66%, cases involving Class 9 accounted for 10.98%, and cases involving Class 30 accounted for 8.37%.
There were1,534 cases involving a foreign element, which accounted for 42.46%. Among the foreign-related cases, the following 10 countries contributed most to malicious registrations: the US, France, Germany, Japan, England, Switzerland, Italy, Singapore, the Virgin Islands and South Korea.
First instance administrative cases
During the same period of time as aforesaid, an aggregate number of 20,737 first instance administrative cases regarding the affirmation and authorization of trademarks were concluded at the Beijing IP Court and the Beijing No 1 Intermediate People’s Court. Among those cases, 12,201 cases involved the malicious registration of trademarks, accounting for 58.84% of the total number.
Regarding the types of disputes, cases involving the rejection of trademark registration accounted for 61.46%, cases involving trademark opposition accounted for 23.27%, cases involving the invalidation of trademarks accounted for 23.27% and cases involving dismissal of the review application accounted for 0.33%.
Regarding the class of goods or services, the following five classes were most affected by malicious registrations: Class 25 (clothing, footwear, headgear), Class 9 (electronic and electric appliances), Class 35 (advertising, business management), Class 30 (food, rice, flour) and Class 11 (household appliances).
The cases involving the foregoing five classes of goods and services accounted for 41.93% of the total number of administrative cases of first instance concerning the affirmation and authorization of trademarks.
1,534 cases involved a foreign element. They accounted for 42.46%. Among the foreign-related cases, the following 10 countries contributed most to the arena of malicious registrations: the US, Germany, France, Japan, England, Switzerland, Italy, South Korea, Netherlands and Singapore.
Civil lawsuits
The malicious registration of trademarks also exists in civil lawsuits in China. During the same period of time, an aggregate number of 137 civil cases involved the malicious registration of trademarks. These civil cases fell within disputes over infringement of trademark rights, disputes over infringement of copyright, disputes over infringement of corporate names (trade names) and other disputes related to unfair competition. Among the civil cases, those involving the infringement of rights accounted for 86.93%, and those involving unfair competition accounted for 12.42%.
Developments
In recent years, both the Chinese government and the judiciary have emphasised the protection of intellectual property rights, with the judicial authorities playing a key role. On April 10 2018, President Xi Jinping gave a keynote speech at the opening of the Boao Forum for the Asia Annual Conference 2018 stating that China will continue to strengthen the protection of intellectual property rights, significantly increase the costs of infringement and fully utilize the deterrent functions of the law.
In April 2017, the Supreme People’s Court published the Plan on the Judicial Protection of China’s Intellectual Property Rights which is aimed at continuing to strengthen the protection of intellectual property by adhering to the principles of “justice playing the predominant role” and “strict protection”. As the court that adjudicates intellectual property cases of first instance, the Beijing IP Court has conducted effective regulation of the malicious registration of trademarks. In April 2017, the court especially held a press conference where four regulatory measures as well as 18 typical cases on regulating malicious registration were discussed.
We believe that with the continuous efforts of the judicial and administrative authorities, there will be fewer and fewer malicious registrations of trademarks and the Chinese market will be fairer, more open and thorough.
The statistical data above is provided by Beijing IPhouse Technology Network. Should you have any questions regarding the data or want further data regarding intellectual property, please visit www.iphouse.cn or send an email to wjq@iphouse.cn.
