Curb Bad-Faith Trademark Application in China

How to Curb Bad-Faith Trademark Application in China

 Qin Yuanming at INTA.jpg

Yuanming QIN, Presiding Judge of IPR Division of SPC

At the International Intellectual Property Judges’ Forum, Judge Yuanming QIN, the presiding judge of the Third Civil Division (Intellectual Property Court) of People's Supreme Court, gave a keynote speech in English on "How to curb bad-Faith trademark applications in China." Based on the fourth revision of China's Trademark Law, he took the Jordan case as an example, explained to the participants that the right of foreigners' names can be judicially protected as a prior right. He also explained the scope of "other improper means" and bad-faith filing problems in Trademark Law in detail.

Trademark Law Revision

On April 23, 2019, the National People's Congress (NPC) of China has adopted the draft of the proposed amendment to the Trademark Law. It will come into force as of November 1, 2019.

In the revised Trademark Law, Art 4 provides that 'Any natural person, legal person or other organization that needs to obtain the exclusive right to use a trademark for its goods or services during production and business operations shall apply for trademark registration to the trademark office. Any application for the registration of a trademark that is not intended for use shall be rejected'.

The revision of Trademark Law means that China has become a power-house of trademark. By the end of 2018, China has received 7.37 million trademark applications and has 18.49 million in the trademark register. There are 6594 trademark applications via Madrid system. Furthermore, Chinese courts at all levels have handled 68,107 trademark cases in the first instance, covering administrative, civil and criminal litigations. Chinese courts have been adhering to the principle of upholding honesty and credibility as well as creating a level playing field through a series of measures of protecting prior existing rights and forbidding abuse of rights.

Curb the Bad-Faith Trademark Application

China upholds a 'first-to-file' system in trademark registration, nonetheless it sometimes causes bad-faith filing problems.

In China, there are four courts empowered to hear all administrative trademark cases: Supreme People's Court, Beijing High People's Court, Beijing Intellectual Property Court and No. 1 Intermediate People's Court. From 2013-2017, the aforementioned courts have heard 5436 administrative trademark cases featuring a bad-faith element to it.

First, QIN explained the judicial protection of “prior rights”. In the case of Michael Jeffrey Jordan v. Trademark Review and Adjudication Board and Jordan Company ([Case No.] Supreme People's Court (2016) ZGFXZ No. 27), the ruling of this administrative dispute over trademark demonstrates that name right can constitute prior rights protected by Trademark Law.

Qin then took a case to indicate that stockpiling a large number of trademarks shall fall into the category of Art 44.1 “other improper means”.

At last, he quoted the case Wang Suiyong v. Ellassay to explain that malicious acquisition and exercise of trademark rights are not protected by law. Where any party violates the principle of good faith, damages legitimate interests of others, disrupts fair market competition order, maliciously obtains and exercises trademark rights or claims infringement against others, the People's court shall reject the claims on the ground of abuse of rights.

This article was written by China IP reporter based on the minutes of the forum and was not reviewed by the judge himself.

 


May 24, 2019

Source: China IP 

Photo from: INTA