26th February, 2019
On 12 February 2019, CNIPA (previously SIPO, China) published a draft regulation, Some Provisions on Regulating the Application for Registration of Trademarks, inviting public comments. Anyone who has comments or suggestions may send them to CNIPA via email to firstname.lastname@example.org, fax to +86 10 62083681 or mail to CNIPA before 14 March 2019. Such publication can be found on the website of the CNIPA, www.sipo.gov.cn.
The draft regulation is to regulate the trademark applications in China with the purpose to beat bad faith trademark filings. In the draft regulation, the phrase “abnormal trademark applications” is used which actually refers to bad faith or malicious trademark applications. The draft regulation prescribes that no one should conduct abnormal trademark applications and defines some types of abnormal trademark application acts in its Article 3. It also prescribes the consequence and punishment of such acts in Articles 4 and 5.
According to Article 3 of the draft regulation, the following acts are referred to as “abnormal trademark applications”:
- Imitating a trademark well known to the relevant public, and taking unfair use of the goodwill of others;
- Pre-emptively applying for the registration of trademarks that have been used by others and have had certain influence, and improperly seizing the goodwill of others;
- Pre-emptively applying for registration of a trademark identical with or similar to a prior right of others although he knows or should have known the existence of others’ prior rights;
- Repeatedly applying for trademark registration with clear improper purpose;
- Filing a large number of applications for trademark registration in a short time obviously exceeding the reasonable limit;
- The application for trademark registration lacks the true intention to use, and the applicant does not have the actual need of obtaining the exclusive right to use the trademark on the concerned goods or services;
- Other trademark application registration acts that violate the principle of good faith, infringe upon the lawful rights and interests of others or disrupt the market operation order;
- To help others or for trademark agencies to act as agents for applying for registration of trademarks of the types mentioned in Items (1) to (7) of this Article.
According to Article 4 and 5 of the draft regulation, the punishment and consequence of abnormal trademark application acts mentioned in Article 3 will be possibly the followings:
- The concerned trademark will be refused or invalidated;
- The assignment of the concerned trademark will not be allowed;
- Any trademark agency which conducts or represents the applicant to conduct such acts will be marked in its credit record about such acts and, if severe enough, will not be allowed to act as a trademark agency any longer;
- The misbehaviour will be published on the website of CNIPA and in the China Intellectual Property Newspaper; it will also be disclosed on the national platform of credit information system and the related authority may impose punishment;
- No financial support should be given to an applicant conducting such acts and the financial support already given should be returned;
- CNIPA may have a formal interview with the legal representative of the agency which conducted the forbidden acts and request the agency to correct and regulate its behaviour and the trademark association may take measures to punish or regulate the concerned agency and its agents;
- Criminal liability may be imposed if the concerned party cheats for rewards, financial support and others by abnormal trademark applications to a severe degree.