The attention to Article 4 of Trademark Law has continued since 2019. In the latest revised Trademark Law enforced from Nov. 1^st, 2019, the sentence “A malicious trademark registration application not for the purpose of use shall be rejected.” is added to the original Article 4. These 21 characters have endowed censors an “imperial sword” to crack down on malicious trademark registration applications not for the purpose of use. According to the data released by China National Intellectual Property Administration, it rejected more than 10,000 cases concerning malicious trademark registration application not for the purpose of use based on the new Trademark Law in 2020. As the investigation port is shifted forward, the striking effect begins to take. One and a half years have passed since November 2019, but the attention to “Article 4” has not diminished. It has filled the once legislative blank, making those malicious applicants who do not rush registration of famous brands but evidently make malicious registrations and hoard trademarks in large quantities unable to escape from punishment. Even if there are escaped criminals, the opponent or the applicant for announcement of invalidation can use Article 4 of Trademark Law to crack down on malicious registration.

This paper will explore the power of Article 4 of Trademark Law from the following typical cases about objection in 2020 recently released by China National Intellectual Property Administration: (I) The ‘Allride’ trademark objection case for “cracking down on malicious trademark registration applications in large quantities and not for the purpose of use and normalizing the trademark registration order”; (II) 97 ‘Yunnan Copper’ series cases about announcement of trademark invalidation for “cracking down on malicious trademark registration application not for the purpose of use or registration obtained through other improper means”.

1.    (2020) Shang Biao Yi Zi No. 0000108829 and (2020) Shang Biao Yi Zi No. 0000104426

The opponent “Allride Technology Co., Ltd” raised an objection for No. 33777099 and No. 33953937 “Allride” trademark of the person challenged “Xu Haojie” (applicant for registration). Though the opponent claims that the person challenged maliciously rushed registration of the trademark previously used by the opponent and having a certain influence and infringed on his prior enterprise name right, the Trademark Office thinks that the evidence material provided by the opponent is insufficient for proving that the opponent had used the trademark “Allride” on relevant commodities or services and made it have a certain influence before the disputed trademark application date and is insufficient for proving that the opponent had made the enterprise name “Allride” widely known in China’s relevant industries before the disputed trademark application date. Therefore, Article 32 quoted by the opponent was not supported by the Trademark Office. A favorable turn for the case is that the person challenged had applied for registration of 170 trademarks under more than 20 commodity or service categories successively and dozens of the trademarks such as “Kexuye”, “Boshengshang”, “Shunzhi”, “Xidi”, “VEONEER”, “Anruanhuishi” and “Ziyun Technology” are the same as or similar to other people’s enterprise names, that the person challenged had failed to submit the evidence about using the above trademarks or the origin for trademark creation and had failed to provide the purpose for actually using the above trademarks and that the quantity and categories of the trademarks applied for registration had evidently surpassed the normal demand of the market entity. Eventually, the Trademark Office asserted that the disputed trademarks applied for by the person challenged had constituted “malicious trademark registration application not for the purpose of use” referred to in Article 4 and so rejected a registration for No. 33777099 and No. 33953937 “Allride” trademark in accordance with Article 4 of Trademark Law.

2.    97 “Yunnan Copper” Series Cases about Announcement of Trademark Invalidation including Shang Ping Zi [2020] No. 0000330418

The applicant “Yunnan Copper (Group) Co., Ltd” raised a request for announcement of invalidation to 97 “Yunnan Copper” trademarks approved for registration (including No. 37762286 trademark) of the respondent “USA Aloha Group Limited”. The applicant claims that as a shortened form of the applicant, “Yunnan Copper” has established the only and fixed corresponding relationship with the applicant and is very popular and influential in relevant areas. The disputed trademark has constituted a complete plagiarism to the shortened form of the applicant’s enterprise name and the previously used trademark, infringed on the applicant’s enterprise name right and at the same time constituted a rushed registration of the trademark previously used by the applicant and having a certain influence. However, the Trademark Office disagreed with the applicant’s above opinions, claiming that though “Yunnan Copper”, as a shortened form of the applicant’s enterprise name, had gained a certain popularity through use before the disputed trademark application date, there is a remarkable difference between the commodities designated to use the disputed trademark and the applicant’s famous nonferrous industry and the applicant had failed to submit the evidence for proving that “Yunnan Copper”, as a shortened form of the enterprise name, and the “Yunnan Copper” trademark had been used in commodities the same as or similar to the commodities designated to use the disputed trademark. Therefore, the registration of the disputed trademark has not constituted an “infringement on others’ existing priority rights” and “rush registration of a trademark already used by others and having a certain influence through improper means” referred to in Article 32 of Trademark Law. Look, it is another malicious registration behavior that Article 32 cannot crack down on. However, a favorable turn for the case is that the respondent had a total of 146 series trademarks including “Yunnan Copper”, “Yunnan Copper Group”, “Yunnan Copper Stock”, “Yunnan Copper Company” and “Yunnan Metallurgy” under its name, concerning all commodity and service categories 1-45, that more than 40 “Yunnan Copper” series trademarks and the “Yunnan Metallurgy” trademark had been transferred by its affiliated companies on Feb. 6^th, 2019 and that at the same time, the affiliated companies of the respondent had more than 40 series trademarks concerning “Yunnan Copper”, “Yunnan Metallurgy” and the icon of ox horn and 19 series trademarks concerning “Yunnan Copper”, “Yunnan Copper Group” and the icon of ox horn under commodity and service categories 3, 4, 6, 8, 10, 12, 14, 15, 16, 17, 20, 21, 32, 35, 36, 37, 38, 40, 41, 43 and 44 under their names and many of them had been transferred. Therefore, the Trademark Office asserted that the respondent and its affiliated companies had applied for and hoarded registered trademarks in large quantities, claimed high transfer fees in the name of cooperation and made malicious lawsuits and speculations with the registered trademarks, and that this behavior had constituted “malicious trademark registration application not for the purpose of use” referred to in Article 4 of Trademark Law and “obtainment of registration through other improper means” referred to in Paragraph 1, Article 44 of Trademark Law due to being evidently against the principle of honesty and credibility, having the purpose of seeking illegal benefits through rushed registration of trademarks and seriously disturbing the normal trademark registration order. Eventually, the 97 disputed trademarks were announced invalid.

The above circumstances are the best result that a right holder can achieve through safeguarding its own rights by Article 4 of Trademark Law. However, in reality, there are many cunning malicious applicants attempting to escape from punishment from Article 4 by colluding with “non-affiliated” companies and breaking up or resolving evident “hoarding” behaviors through frequent transfers in small quantities and by multiple batches. Therefore, there is still a long way to go for setting regulations about malicious registration. How to settle the problem from the origin seems to be a subject that can never be passed by - only through full development of domestic industries, overall enhancement of national qualities, scientific improvement of laws and regulations about trademark and benign development of the trademark registration and using order can “malicious hoarding not for the purpose of use” start from Article 4 and eventually end in Article 4. We are expecting the arrival of this day.