Cissy Zhou, Zhang Qiqi, King and Wood Mallesons’ Intellectual Property group
On 15 December 2020, the National Expert Training Course for Trademark Examination and Review was held in Guiyang. He Zhimin, deputy director of the China National Intellectual Property Administration(CNIPA), attended the course, emphasizing that: in 2021, CNIPA will further intensify its efforts to crack down on bad faith trademark registrations.
To combat malicious squatting and hoarding, the newly revised Trademark Law of the People’s Republic of China in 2019 adds the provision in Article 4 that “A bad faith application for trademark registration for a purpose other than use shall be rejected”. According to the information on the official website of the Trademark Office, on December 6, 2020, the Trademark Office held the Forum on “Continuous Optimization of Business Environment for Ecological Construction of Trademark Industry” on the 12th China International Trademark and Brands Festival. It was disclosed at the meeting that: From January to October, 9,610 bad faith applications for trademark registrations not for the purpose of use were rejected in the phase of examination; in the phase of opposition, Articles 4 and 15 were applied to crack down 3,293 cases of opposition to bad faith applications not for the purpose of use; in the phase of review, Articles 4 and 15 were applied to crack down 461 cases of bad faith registrations not for the purpose of use. Moreover, the Forum on the subject matter of “Trademark Registration and Protection from the Civil Code perspective” of the 12th China International Trademark and Brands Festival has also published the following typical trademark cases in the application of Article 4 of the Trademark Law:
Case of Opposition against Trademark “珍视明”
This is a case of bad faith squatting of several trademarks identical with or similar to that of various subjects with certain popularity or higher distinctiveness. Jiangxi Zhenshiming Pharmaceutical Co., Ltd filed an opposition against the “珍视明” trademark under the name of a company in Shenzhen in class 9. In this case, the opposed party has applied for more than 3,400 trademarks in various classes of goods or services since 2017, covering more than 20 classes, and many of the trademarks are identical with or similar to the trademarks that have been used previously by others and are of certain distinctiveness and popularity, such as“清扬”、“翰皇HANOR”、“蜂花”、“张小泉” etc. Some of the trademarks have been rejected or opposed by the relevant parties, and the opposed party has not given reasonable explanations. Therefore, the Trademark Office believes that the application for a large number of trademarks by the opposed party is obviously beyond the needs of normal business operation. In combination with the fact that the opposed trademark is identical to the trademark “珍视明” of which the opponent has certain popularity, it can be determined that the opposed party has violated the provisions of Article 4 of the Trademark Law by applying for registration of a large number of identical or similar marks on dissimilar goods or services with others’ prior trademarks of certain popularity or strong distinctiveness.
Case of Opposition against the Trademark “碧凡”
This is a case of bad faith squatting by applying for the registration of a trademark that is identical or similar to other commercial signs other than trademarks. “碧凡” is the trade name that the opponent began to use after the company registration in 2012. The opponent registered and operated “碧凡 Cosmetics Store” on the Tmall platform in 2013, and signed a joint distribution agreement with multiple brands in the name of “碧凡”. There are 461 trademarks under the name of the opposed party, involving 26 classes. From May 2018 to July 2018, 22 oppositions were filed against the opponent’s trademark, involving 3 classes, but most of them were 35 classes. And the opposition reasons were mostly focused on the opposed party’s bad faith squatting of opponent’s Tmall store name. Upon investigation, it was found that the opposed trademark is indeed the name of the Tmall store of the opponent, and the opposed party failed to give a reasonable explanation on the creative idea or use intent of the trademark in opposition. Therefore, the Trademark Office determined that the opposed trademark falls under the circumstance of “a bad faith application for trademark registration for a purpose other than use” as set forth in Article 4 of the Trademark Law, and shall not approve the registration.
Case of Opposition against the Trademark “马石油酷腾”
This is a case in which the ownership of a disputed trademark was transferred, but Article 4 of the Trademark Law is still applicable. In this case, in addition to the application for opposed trademark “马石油酷腾”, the former opposed party has also repeatedly applied for registration of the trademarks “马石油途特力”、“马石油酷泰”、“马石油迈奇”、“马石油欣腾”and “马石油炫腾”, which are simple combinations of the Opponent’s trademarks “马石油”、“途特力”、“酷泰”、“迈奇”、“欣腾”、“炫腾” and etc. in class 1 and class 4 without reasonable explanations. The Trademark Office determined that the former opposed party repeatedly applied for trademark registration in class 1 and class 4 without providing its true intention of use, which meets the requirement of “application for trademark registration for a purpose other than use” as set forth in Article 4 of the Trademark Law. Although the opposed trademark has been transferred before the examination of this case, it does not affect the application of Article 4. According to Article 4 of the Trademark Law, the opposed trademark shall not be approved.
In addition to the above opposition cases, in the face of the increasingly large-scale and specialized situation of bad faith trademark registrations, the Trademark Office has sorted out and summarized the typical malicious application types and related cases by optimizing the examination sub-text process. In the phase of examination, trademark applications identified as obviously subjectively malicious trademark applications shall be subject to strict review and be actively rejected, which demonstrating the determination of the Trademark Office to crack down on malicious registration.