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November 2019
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Brief description of the new regulations issued by CNIPA and impact on opposition/invalidation efforts against bad faith filers

By Emma Ma

CNIPA recently issued a new regulation “Provisions Regulating the Application for Trademark Registration” (hereinafter may be referred to as “Provision”) as guidelines for the implementation of the new trademark law. The “Provision” will be effective as of December 1, 2019. The “Provision” is an elaboration of the new trademark law by explicitly defining the specific behavior types of malicious application and hoarding registration and the relevant measures against these behavior. To be specific, the most important two regulations in the “Provision” are Articles 3, 8 and 9.

Article 3: The principle of good faith shall be upheld in the application for trademark registration and the following behaviors are prohibited:

(1) Behaviors belonging to the regulation of “application for registration of a trademark in bad faith and not for the purpose of use” as stipulated by Article 4 of the Trademark Law;

(2) Behaviors belonging to the regulation of “application for registration of a trademark that is a reproduction, imitation, or translation of another's well-known trademark” as stipulated by Article 13 of the Trademark Law;

(3) Behaviors belonging to the regulation of “application for registration of a trademark filed by the agent or representative for the trademarks of one of its principals without authorization” and “the trademark under application is identical with or similar to an unregistered trademark already used by another party; the applicant clearly knows the existence of the trademark of such another party due to contractual, business or other relationships with the latter other than those prescribed in the preceding Paragraph” as stipulated by Article 15 of the Trademark Law;

(4) Behaviors belonging to the regulation of “application for registration of a trademark which infringes upon the pre-existing right of others or is preemptive registration filed in improper means of a trademark that is already used by another party and has produced a certain influence” as stipulated by Article 32 of the Trademark Law;

(5) Behaviors belonging to the regulation of “application for registration of a trademark filed by deceptive or other improper means”;

(6) Behaviors that violate the principle of good faith, breach the public order and good morals or has other unhealthy influence.

Article 8: When deciding whether an application for trademark registration violates Article 4 of the Trademark Law, the Trademark Office may take the following factors into consideration:

(1) The amount, designated class and transactions (assignment histories) of the total trademarks filed by the trademark applicant or other natural person, legal person or organization associated with the trademark applicant;

(2) The business field and operating status of the trademark applicant;

(3) The history where the trademark applicant has been determined by an effective administrative decision or a ruling judicial judgment to have engaged in an act of malicious trademark registration that infringed upon other’s exclusive right to the registered trademark;

(4) The fact whether the trademark applied for registration is identical with or similar to a trademark with a certain popularity owned by others;

(5) The fact whether the trademark applied for registration is identical with or similar to the name of a famous person, the name of a famous enterprise, the abbreviation of the famous enterprise name or any other famous commercial symbol;

(6) Other factors that the Trademark Office believes should be taken into account.

Article 9: The assignment of the trademark will not affect the Trademark Office’s recognition of the behaviors listed in Article 3.

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