Bad Faith Trademark Applications to be regulated by New Provisions in China

The National Intellectual Property Administration of China (the “CNIPA”) issued Several Provisions on Regulating the Application for Registration of Trademarks (Draft for Comment) (the “Draft Provisions”) on 12 February 2019. The Draft Provisions aim to regulate abnormal trademark registration activities in China.

In accordance with the Draft Provisions, the following circumstances are considered as abnormal applications for trademark registrations:

1. applying for trademark registrations, which are imitations of those familiar to the relevant public, to take advantage of others' business reputation;
2. preemptively registering a trademark that is previously used by others and has certain influence, to improperly extract the business reputation of others;
3. preemptively applying for registration of trademarks which are the same or similar with some prior rights under the premise that such prior right is known or should be known to the applicant.
4. repeated applications for the registration of one trademark with obvious improper purpose;
5. applying for registration of a large number of trademarks in a short period of time, obviously exceeding a reasonable limit;
6. applying for trademark registrations with no intention for actual use, that is, there is no actual need to obtain the trademarks exclusive right for goods or services;
7. applying for trademark registrations in violation of the principle of good faith, infringing the legitimate rights and interests of others or disrupting the market order; and
8. helping other individuals or trademark agencies to conduct an application for registration of trademarks mentioned in Items 1) to 7).

If an individual or an entity conducts any activities falling within the scope of the abnormal applications mentioned above, these activities shall be regulated as follows:

1. where an application is submitted, the applicant will be required to submit relevant evidentiary materials and explain the reasons for their need to register the trade mark; if there is a lack of justifiable reason or insufficient evidence, the application will be rejected and the registration will not be approved;
2. where the registration of a trademark is granted, and such registration is deemed as granted via other improper means as stated in Article 44 of the Trademark Law, and it shall be declared to be invalid;
3. where a registered trademark is assigned, and such assignment is deemed as one with adverse effects as stated in Article 42 of the Trademark Law, it will not be approved; and
4. where a trademark agency engages in an abnormal application for trademark registration, if such behavior is deemed as disturbing the market order of the trademark agency by other improper means, as stated in Article 68 of the Trademark Law, it shall be put in the record of credits. If the circumstances are serious enough, the relevant authorities may cease accepting such trademark agency’s filings.

In addition to the measures mentioned above, the CNIPA may impose other punishments, such as publishing these activities or, revoking or prohibiting funds or awards given to the wrongdoing individual or entity. The CNIPA also encourages any individual or entity to report any abnormal applications of trademark registrations.

Please click here to read the full text (in Chinese only) of the Draft Provisions.