China’s New Measures to Tackle Bad Faith Registrations
The China’s National Intellectual Property Administration (“CNIPA“) has recently published its draft Several Measures on Regulating Trademark Filing for Registration (“Draft Measures“) and is seeking comments from the public on the Draft Measures by 14 March 2019.
The Draft Measures aims at combating the longstanding trade mark squatting problem in China and reflects the CNIPA’s intention of taking a more aggressive approach in dealing with the problem.
The Draft Measures lists out the following scenarios which would be considered to be “abnormal filings”:-
- Application for registration of a mark which imitates the other’s famous mark
- Squatting of the other’s mark with a certain level of influence
- Pre-emptive registration of an identical or similar mark with knowledge of the other’s prior right
- Repeated applications for the same mark with apparent ill intention
- Bulk applications filed within a short period of time without reasonable cause
- No actual use intention and no actual need to obtain trademark exclusive rights in certain goods/ services
- Other filings which are in breach of the good faith and honest principle, infringe other’s legal rights or interrupt the market order
- Assisting others or acting a trade mark agent carrying the activities in points 1 to 7 above
This “abnormal filing” concept can form a basis for refusing registration of a trade mark or application for assignment recordal and allowing opposition of an applied mark or invalidation of a registered mark. The Trademark Office will be entitled to ask applicants to provide reasons justifying the abnormal filings or to refuse the abnormal filings. Any organisations or individuals may also take the initiative to report any “abnormal filing” to the CNIPA.
It is expected that the Draft Measures, when come into force, should provide clearer guidelines to the examiners at the Trademark Office for the purpose of improving the overall quality and level of consistency of trade mark decisions and would also bring stronger deterrent effect to trade mark squatters. In particular, any abnormal applications may be publicised on CNIPA website as well as China Intellectual Property News, a Beijing-based newspaper, and the applicant may face other punishments administered by related authorities.
The new initiative by CNIPA is certainly welcome by brand owners and the international community which have been keeping a close watch on China’s IP system over the years.