Released on: January 12, 2018

Source of information: People.cn

http://ip.people.com.cn/n1/2018/0110/c179663-29756557.html

by XING Zheng

At present, there is a host of malicious trademark registering acts, such as going against the principle of good faith, maliciously clinging to others’ goodwill and preemptively registering high-profile trademarks, infringing on others’ priority rights, occupying public resources, and repeatedly preemptive registration in the market.

In this regard, a relevant person in charge from the Trademark Office of The State Administration For Industry & Commerce of the People’s Republic of China says, faced with the situation where the malicious trademark registration tends to increasingly form a scale and become specialized, the Trademark Office sorts out and collects the typical malicious application types and relevant cases by means of optimizing the processes for examination and email & document distribution. At the examination stage, the trademark application identified as the one having an obviously subjective malice goes through strict examination, and is proactively rejected. Specifically, there are four outstanding circumstances as follows:

First, applications maliciously clinging to others’ goodwill and preemptively registering high-profile trademarks are rejected.

For instance, Weihai Disu Trading Co. Ltd., has applied for more than 300 trademarks including the trademarks early registered by others and enjoying a high profile; over 200 trademarks applied for registration by the natural person LIN Hao share high similarities with high-profile trademarks from Huawei, Wechat, and the like, and cover identical or similar commodities and services; for another example, over 400 trademarks applied by the UK ARTHUR BRAND MANAGEMENT CO., LTD. are basically obtained by plagiarizing other’s original and high-profile trademarks in terms of non-similar commodities and services.

The applicants in the above-mentioned circumstances have an improper intention of clinging to others’ goodwill and go against the principle of good faith, which easily causes adverse social effects. Thus, the cases are rejected by the Trademark Office according to law.

Second, applications for a host of trademarks with an intention of improperly occupying public resources such as preemptive registration of common names and industry terminologies are rejected.

For instance, Shanghai Juanchang Information Technology Co. Ltd. and a community of shared interests thereof have applied for registering nearly 5,000 trademarks in total regarding the administrative division names below the level of county. The applicant above has an intention of improperly occupying public resources and disrupts the normal trademark registration order, thus easily causing adverse social affects. In this case, the application is rejected by the Trademark Office according to law.

Third, malicious trademark applications for others’ priority rights such as application for registering trademarks of famous persons’ names go through strict examination, and are proactively rejected.

For instance, Jinjiang City Maccready Footwear Trading Co. Ltd. uses the transliteration of a basketball star’s name as a trademark for registration and use without the approval or authorization given by the basketball star in person, and this inevitably causes misunderstandings of the source of the commodity or service in the public. The case goes through strict examination and is proactively rejected by the Trademark Office.

Fourth, applications concerning maliciously and repeatedly trademark squatting and continuously trademark squatting by the same enterprise go through strict examination, and are rejected with reference to prior objection and invalidation cases.

For instance, the natural person WANG Shuben has applied for registration of a plurality of trademarks such as “美的公主” and “容声家宝” similar to famous brands on many categories of commodities, thus has an obvious intention of copying and plagiarizing other’s high-profile trademarks, and his acts belong to the acts of subjectively and maliciously registering and hoarding a great number of trademarks. Accordingly, the applicant has no due legitimacy for trademark registration, and violates the principle of public order and good social customs. In this case, the trademarks are invalidated by the Trademark Review and Adjudication Board according to law. Thereafter, the applicant applies for registering completely identical trademarks again. Upon examination, the Trademark Office identifies that the applicant’s act belongs to an act of repeatedly and maliciously trademark squatting, and finds that this application act disrupts the trademark registration order, and violates the principle of public order and good social customs with reference to the reasoning for prior invalidation. Accordingly, the application is rejected.

In addition, the Trademark Office has also intensively dealt with a host of trademark cases where others’ trademarks are maliciously hoarded, and others’ goodwill is maliciously clang to, thereby curbing the malicious registration acts in violation of the principle of good faith.

For instance, Guangzhou Tianyifang Leatherware Co. Ltd. has applied for a great number of trademarks which are identical to the trademarks of famous companies in the fashion world in terms of characters or graphs and relate to a plurality of categories of commodities. For another example, Guangzhou 4399 Information Technology Co., Ltd. has applied for over 9,000 trademarks, among of which, 210 pieces were opposed by different right holders. The Trademark Office deals with those trademarks together with 39 opposed trademarks.

The application acts of companies above go against with the principle of good faith, and disrupt the normal trademark registration and management order. The Trademark Office puts the trademark cases opposed by the opposing party together for handling, and makes the decision that a plurality of trademarks opposed by the opposing party are not registered in accordance with pertinent provisions as stipulated in the Trademark Law.

Data shows that 27,000 trademark infringement and counterfeiting cases in total have been investigated and dealt with throughout the system in 2017 with the amount of CNY 333 Million involved and the amount of fines and confiscated money of CNY 443 Million, thereby creating a favorable environment for trademark and brand competition.