At the beginning of this year, there are two important news in trademark practice in China, i.e. the Supreme People's Court announced the Provisions of Supreme People's Court on Several Issues Concerning Trial of Administrative Cases Involving the Authorization and Determination of Trademark Rights ("the Provisions") on January 11, 2017, and China Trademark Office announced the new Trademark Review and Trail Standards ("Standards") on January 4, 2017, which clarify and explain certain provisions in the latest Trademark Law (amended in 2013).

    Below you may find the details of some shining points, especially related to fighting against bad faith registration:

Article 15: Trademark Applications Filed by Business Partners
    In cases where the real brand owner opposes a trademark filed by someone who used to have certain collaboration relationship with the owner, the old rule was rather narrow, i.e. only limited to the direct agency relationship, whereas according to the new rule, it is broadened to cover various relationship either direct or indirect, such as trading partners, employment, close geographical relationship and parties in negotiation to become partners.

Such change is favorable in fighting against bad faith registration filed by parties who have learnt about the brand from the real brand owner and attempted to register it.

Article 44.1: Registrations by deceitful or other improper means

    It provides in part that trademarks "registered by deceitful or other improper means" should be invalidated, which is further clarified to cover situation where the registrant filed many marks that are identical or similar to marks with strong distinctiveness, to a famous trade name, company name, association's name, package, etc., not belonging to the applicant; and obviously does not have intension to use these marks.

    Such clarification is helpful in supporting invalidations against those bad faith registrations whose registrants have also copied many other brands.

    Change in practice: TRAB review not waiting for non-use cancellation

    In the past, if the CTMO cited a mark to reject a trademark application, the applicant could appeal to the TRAB, file a non-use cancellation action against the cited mark, and ask the TRAB to suspend the review case until a decision was issued in the non-use cancellation action.  However, due to heavy caseloads, TRAB examiners have recently stopped waiting for decisions in non-use cancellation actions against cited marks where the non-use cancellation is filed after the trademark application.

    We believe that this is a temporary move while the TRAB works to decrease its caseload.  However, until further notice, we recommend taking action against potential cited marks as earlier as possible, such as after the availability search before filing trademark applications.