China’s National Intellectual Property Administration (CNIPA) released the updated Guidelines for Trademark Examination and Trial on November 22, 2021, effective January 1, 2022. The updated Guidelines will hopefully further reduce trademark squatting in China.
According to the Guidelines, following factors are taken into consideration for trademark examination and trial.
(1) The number of trademark registration applications is huge, which obviously exceeds the requirements of normal business activities, lacks real intention to use, and disrupts the order of trademark registration.
(2) A large number of copies, imitations, or plagiarisms of multiple subjects’ prior trademarks with a certain degree of popularity or strong distinctiveness, disrupting the order of trademark registration.
(3) Repeated applications for registration of a specific trademark with a certain degree of popularity or strong distinctiveness for the same subject, disrupting the order of trademark registration.
If such repeated application for registration is a malicious registration situation regulated by other provisions of the Trademark Law, other provisions shall apply.
(4) A large number of applications for registration are the same as those of others’ business names, abbreviations of business names, e-commerce names, domain names, product names, packaging, and decorations that have a certain impact, or other well-known and identifying slogans, designs and other commercial logos.
(5) A large number of applications for registration are identical or similar to public cultural resources such as the name of a well-known person, a well-known work or role, or a well-known and recognizable art work of others.
(6) A large number of applications for registration are identical or similar to the names of administrative divisions, mountains and rivers, scenic spots, and buildings.
(7) A large number of applications for registration of generic names, industry terms, or signs that directly indicate the quality, main raw materials, functions, uses, weight, and quantity of the goods or services that lack distinctiveness.
(8) Submitting a large number of trademark registration applications and transferring a large number of trademarks, and the assignees are scattered, which disrupts the order of trademark registration.
(9) The applicant has sold in large quantities for the purpose of seeking improper interests, forced commercial cooperation from the previous user of the trademark or others, demanded high transfer fees, license fees or infringement compensation, etc.
(10) Other circumstances that can be deemed malicious in applying for trademark registration.
Representing Chang Tsi & Partners, Spring Chang, Michael Wu, Michael Fu, Tracy Shen, Ron Tsi and April Seo participated in the annual meeting on 15-19 November 2021 held by International Trademark Association (INTA), the biggest community in trademark industry. We were happy to meet our clients and friends at the end of 2021 and discuss future cooperation in the coming 2022.