News & Articles

PRC Regulating Trademark Filing Acts is Coming into Effect from 1 December 2019

 

by Angel Luo & Evelyne Yeung

Following the Several Provisions for Regulating Trademark Application and Registration (“Draft for Comments”) on 12 February 2019, and the approval of Amendments to the PRC Trademark Law on 23 April 2019 (“TM Law”) which is in force from 1 November, the State Administration for Market Regulation (“SAMR”) has announced that the approval of Rules on Regulating Trademark Filing Acts which is coming to be effective on 1 December 2019 (“SAMR Decree No.17”).  

The main contents of SAMR Decree No.17 regarding bad faith application and registration are in line with that in the Draft for Comments and the amendments to 2019 TM Law, emphasizing that the Chinese authorities have taken proactively actions to continual combating bad-faith trademark filling, so as to improve business environment in the Chinese market.

In brief, in SAMR Decree No.17:

  • applying for trademark registration shall have actual needs;
  • trademark filling shall comply with the principle of good faith; and
  • the following acts are not allowed:
  1. Trademark filling in bad faith without any intention to use the trademark as stipulated in Article 4 of the TM Law;
  2. Coping, imitating and/or translating others’ well-known trademarks, as stipulated in Article 13 of the TM Law:
  3. Where an agent or representative, without authorization from the principal, applies for registration of the principal’s trademark, or a party has business relationship with the holder of the trademark or other relationship and knows or should know the trademark, this applied –for trademark shall be disapproved for registration, if  the holder of the trademark opposes to it, as stipulated in Article 15 of the 2019 TM  Law:
  4. Trademark filling shall neither violate other prior rights (except trademark rights, e.g. copyrights, personal/trade name rights, design patent rights, etc.), nor be file through inappropriate means for registration of  a mark which belongs to the rightful owner who has put the mark in use and already obtained a certain reputation, as stipulated in Article 32 of the TM Law.
  5. Trademark filling is registered  by fraud or any other improper means; and
  6. Others violating the principle of goods faith and public interests and having adversary effects.

Furthermore, Clause No. 8 of SAMR Decree No.17 lists the elements that examiners may take into comprehensive consideration when assessing bad faith filling as stipulated in Article 4 of the TM Law. For instance:

  1. The number of the trademark as allegedly filed in bad faith;
  2. The industry of the applicant belongs to (same or similar industry with the rightful holder of the trademark) ;
  3. Whether the applicant has been ruled as a bad faith filer in other cases;
  4. The extent of similarities between the respective marks; and
  5. Other elements at the examiner’s discretion.   

 

Comment

With the swift release of amendments to the Trademark Law, which is in force from 1 November 2019, and following the SAMR Decree No.17, we opine that the trend of examining bad faith filling, such as opposition and revocation in both CNIPA’s proceedings and the local People’s Court’s proceedings, is likely to be more beneficial to rightful holders of trademarks than that in the past.

Indeed, we have recently received some revocation decisions which are in our clients’ favor.

In gist, one of our cases is that our client’s application for registration of a trademark (an English word mark) in Class 25 was refused because the examiner considered it is conceptually similar to a prior registration of a Chinese trademark (“Citation”) on the same or similar goods. We suggested our client to take revocation against this Citation on the ground that our client has a prior PRC registration of the English work mark & device and the cited owner is a bad faith filer.

We submitted bad faith evidence including but not limited to, lists indicating a large number of applications filed by the cited owner in a very short period, and evidence showing the cited owner does not intend to use the marks. Eventually, the examiner accepted our revocation grounds and ruled that the citation be revoked and removed from the register. We note from the decision that the examiner did take into account of the elements similar to that we mentioned above, i.e. 1, 2, 4 and 5 above in the Decree No.17 and a, b, d and e above in the TM Law in support of the reasoning of our revocation.

In addition, the trade negotiations on one of the essential topics relating to the protection of Intellectual property between China and the United States have yet to be fully settled, the Chinese authorities will be obviously continual working on the combat so as to improve IP protections in China.

For more reference to the relevant news published on 30 October 2019, please visit CNIPA’s website at http://english.cnipa.gov.cn/news/officialinformation/1143355.htm.

We will update the practice and the implementation of the TM Law and the Rules if appropriate. Lastly, if you have ever encountered such bad faith fillings and wish to register your trademark in China, please feel free to let us know and we will assess the availability for registration of your trademark under the latest practice and criteria.

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