MIP: How is the Trademark Law combatting bad faith filings?
CCPIT: According to Article 4 of the Chinese Trademark Law (2019): “trademark applications filed in bad faith without intent to use shall be rejected”.
The CNIPA released the Guidelines on Trademark Examination and Review (Guidelines), stipulating that “without intent to use” in Article 4 refers to scenarios where the applicant does not have genuine intention of use or does not have any plan to use the mark, or there is no possibility that the applicant may use the mark based on reasonable inference.
The Guidelines further provided 10 types of situations to identify bad faith filings, which are:
A large number of trademark filings which exceeds normal business scope;
A large number of copying, imitation, or plagiarism of other entities’ famous marks;
A repeated filing of similar trademarks of one entity and disrupting trademark registration order;
A large number of marks similar to other entities’ trade names, domain names, product names, packaging and etc. with influence;
A large number of marks filed similar to public cultural resources like the name of a well-known person, a well-known character name etc.;
A large number of marks filed similar to names of administrative districts, mountains and rivers, scenic spots, and buildings;
A large number of marks filed similar to generic names, industry terms, or indicators that directly indicate the quality, functions, and other features of the products and lack of distinctiveness;
Filing a large number of marks and then transferring a large number of marks to various entities, disrupting trademark registration order;
Selling a large number of trademarks seeking unjustified interests, demanding commercial cooperation from the prior user of the trademark or others, requiring high assignment fees, license fees, or infringement compensation, etc.; and
Other circumstances that can be deemed as bad faith filings.
There are two exceptions, namely the following situations which are not regarded as bad faith trademarks not intended for use:
The applicant files marks identical or similar to its major mark in different classes for defensive purposes; or
The applicant files a moderate amount of marks for its future business.
Article 4 of the Trademark Law has been an effective weapon in combating bad faith filings. According to CNIPA statistics, about 249,000 bad faith trademarks have been tackled in the procedures of trademark application examination, opposition and invalidation actions in the first half of 2023.
The banning of bad faith filing has also been specifically added to the proposed draft revision of the Chinese Trademark Law issued by the CNIPA for public opinions. We expect to see that the continuous efforts in combating bad faith filing will further reduce trademark squatting in China.
MIP: How is the Trademark Law streamlining the trademarking process?
The current Chinese Trademark Law for the first-time added examination terms. For trademark application cases that do not involve third parties, the examination term is nine months, while for cases involving third parties, like opposition and invalidation cases, the examination term is 12 months. By adding trademark examination terms into the law, the term for examination is predictable and can help to facilitate the trademarking process.
MIP: How is the trademark law strengthening ‘use’ obligations?
Article 4 of the Chinese Trademark Law stipulates that “a bad faith application not for the purposes of use should be rejected”, which explicitly prohibits bad-faith trademark applications filed not for using purposes. And it is also the first time that language like “purpose of use” is included in the Chinese Trademark Law.
On January 13 this year, the China National Intellectual Property Administration (CNIPA) issued a notification on soliciting public opinions regarding the draft revision to the Chinese Trademark Law (the Draft), which further strengthened the obligation of trademark use.
A new article has been added to the proposed draft, stipulating that the trademark registrant shall voluntarily file a statement of use with the IP administrative department of the State Council within a time limit after the trademark is registered.
According to the proposed article, the trademark registrant shall file the statement to the CNIPA within 12 months every five years after the registration of a trademark, showing the use status of the mark or giving justified reasons of non-use. If no statement is filed during the required term, the CNIPA shall notify the registrant. If there is still no response made within six months of the receipt of the notification, the mark will be deemed as abandoned and the CNIPA will remove the registration.
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