Written by:Liao Fei（Intellectual Property）
On April 13, 2022, the CNIPA issued the “Notice on Continuously Cracking down on Malicious Trademark Registrations” (hereinafter referred to as “the Notice”), continuing to maintain the high-pressure “zero tolerance” posture and the normalized crackdown mode. The Notice stressed that strengthened efforts will be made to fight against malicious hoarding and preemptive registration in trademark, which are highlighted by the activities of “hoarding ” and “free-riding” of trademarks, in accordance with the regulations on malicious application for trademark registration with no intent to use as in the “Guidelines for Trademark Examination and Trial”.
To implement the new provision on “malicious application for trademark registration with no intent to use” in Article 4 of the 2019 Trademark Law, the newly amended “Guidelines for Trademark Examination and Trial” on January 1, 2022 listed 10 applicable cases in detail, while the Notice issued this time further supplemented and refined the situations listed in the guidelines, specifying 10 cases requiring severe crackdown. Among them, the newly added situations of enjoined malicious preemptive registration include: 1) the same or similar signs as important CPC meetings, important theories, scientific conclusions, political discourse, etc.; 2) the same or similar signs as national strategies, national policies, major projects, major scientific and technological projects, and well-known events, exhibitions, archaeological discoveries, etc.; 3) the unique words of major sensitive events and emergencies such as major public health events; and 4) the names of famous public figures in such fields as politics, economy, culture, nationality and religion.
It is worth noting that the malicious cases listed in the Guidelines for Trademark Examination and Trial all emphasize the premise of “a huge number of ” or “repeated” registration applications, while the four above-mentioned new cases in the Notice are not subject to such conditions, which means that the examination of these highly sensitive words or symbols in the political, social and economic fields tends to be put on higher pressure of “zero tolerance”. Similarly, the first of the 10 situations in the Guidelines for Trademark Examination is “the applications for trademark registration are huge in number, which obviously exceeds the needs of normal business activities, and lack real use intention, disturbing the registration order in trademark”. However, this Notice directly removed the premise of “a huge number of applications”, which may mean that under the background of severe crackdown, even though the number of trademark applications by a certain entity is not “huge”, once the applications are judged that “the number obviously exceeds the needs of normal business activities” and that they “lack real use intention”, they will still constitute the prohibited situation under Article 4 of the Trademark Law. The specific implementation of this article is yet to be observed, but its wording suggests that under the current high-pressure environment for severe crackdown, the absolute number of trademark applications is not a prerequisite factor to judge whether the applications belong to the enjoined cases. Rather, the factors lie in the comprehensive situations of the applicants and their trademarks.
In addition, for the first time, the Notice listed illegal agency services by trademark agencies for malicious trademark registration applications without use intention as a case for severe crackdown. It stressed the need to implement a strict recordal management system for trademark agencies and strengthen the real-name registration system for agency employees as well as the business signing system. Moreover, case clues of illegal agency for malicious trademark registration will be transferred to local intellectual property administrations and centralized investigation will be organized. If the circumstances are serious, handling of trademark agency business will be prohibited. It also mentioned cracking down on illegal agency of malicious trademark registration through means such as reminding interviews, rectification, inspection, supervision and administrative punishment, and making public the decision on administrative punishment.
The Notice required improving the monitoring list of key malicious trademark registrants with no intention to use the trademark throughout the registration process. All local intellectual property administrations and trademark examination and coordination centers should remind and dissuade market players suspected of engaging in malicious trademark registration, and submit relevant clues to the provincial intellectual property administration for summary and verification to form a list and then further submit it to the CNIPA. If the market entities listed in the key monitoring list handle trademark business, they shall be strictly examined according to law and their burden of proof in actual use will be increased. The Notice also required sharing the listed information of serious violation of law and dishonesty with other relevant departments in accordance with laws and regulations, and imposing joint punishment on subjects on that list. In addition, as key monitoring objects for dishonesty, they are not allowed to enjoy policies and convenient measures such as rapid examination of trademark registration application.
The Notice clearly put forward a new concept of “cancelation of trademarks for no use for three consecutive years for public interests“, guiding social forces to participate in the governance of trademark registration order from the source, and promoting the orderly release of idle trademark resources. It also proposed to strengthen the organic connection between administrative and judicial systems, establish an information sharing mechanism and a communication mechanism before litigation for major cases, promote the consistency of examination and authorization standards, administrative law enforcement standards and judicial adjudication standards, and enhance the linkage between administrative and judicial procedures to handle cases in batches.
In order to curb malicious hoarding in all directions, the Notice also proposed to optimize trademark fees standards and promote the establishment of a graded fee system. It also required all local intellectual property administrations to stop using the number of trademark registration as the main basis for work evaluation. It is not allowed to support the applications for trademark registration (including International Registration under the Madrid System) in any form such as subsidies and awards, and canceling of the subsidy and award policies will be put on the agenda.
Attached: CNIPA Notice on Continuously Cracking down on Malicious Trademark Registrations http://sbj.cnipa.gov.cn/tzgg/202204/t20220413_21839.html