The China National Intellectual Property Administration (CNIPA) published a question and answer (Q&A) series on February 7, 2022, further clarifying the New Trademark Examination and Adjudication Criteria (New Criteria) that took effect on January 1, 2022.
Q&As on Well-Known Trademark Recognition
Highlighting the good faith principle, applicants must guarantee that all evidence and statements are made in good faith and declare that they are responsible for the authenticity, accuracy, and integrity of their submissions. CNIPA has expanded what can be submitted as evidence to show that a mark is well-known to include new types of evidence materials, such as, online e-commerce sales records, electronic printouts of tax certificates, etc. CNIPA may refuse to accept the recognition requests from parties that are guilty of a serious breach of credibility.
CNIPA confirms that applications for well-known status will be reviewed only in exceptional circumstances. It will consider recognizing a trademark as well-known only when no other grounds can be invoked to protect the interests of the rights holder. The Q&A specifies that when a trademark contains wording in a different language from a well-known trademark, but the wording has an established association with the well-known trademark, that the mark will be deemed a “translation” of the well-known trademark. CNIPA has expanded what can be submitted as evidence to show that a mark is well-known to include new types of evidence materials, such as, online e-commerce sales records, electronic printouts of tax certificates, etc.
Q&As on Bad-Faith Applications
In the Q&A, CNIPA distinguishes between trademark squatting and trademark hoarding. The former aims at freeloading off famous brand names, clout-chasing, and exploiting the names of public figures; the latter aims at monopolizing trademarks without intent to use them.
The Q&A also describes some typical cases of malicious acts, including:
Applying for a high volume of trademarks in a short period of time, repeatedly applying for registration of a famous trademark of one legal entity, or applying for registration of trademarks owned by third parties;
Transferring a large number of trademarks to different assignees; or
Forcing the rights holder to enter into a business cooperation or demanding high transfer fees, license fees, or infringement damages, etc.
The Q&A reflects the New Criteria’s tolerance towards reasonable defensive trademark applications in business operations, in responding to a persistent phenomenon that large enterprises may use defensive filings to prevent others from exploiting their house mark on non-core goods or services, or by registering similar marks that may dilute or tarnish the corporate brand.
The Q&A serves to bring clarity and understanding to the New Criteria. CNIPA is generally bound by these rules in the cases brought to it for its review. If an applicant receives a CNIPA decision which is contradictory to the New Criteria, it may seek a judicial review by a court.
This article is published at:https://www.inta.org/perspectives/china-cnipa-qa-on-well-known-and-bad-faith-trademarks/
