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At a recent press conference held by the Information Office of the State Council of China, HE Zhimin, Deputy Commissioner of the National Intellectual Property Administration of China (CNIPA) said that last year , the CNIPA had severely cracked down on malicious brands. The results of this CNIPA effort can be viewed below:
A timeline of China’s tougher stance in the fight against malicious trademark registrations in recent years
Since 2019, the CNIPA has gradually introduced tougher laws on malicious trademark practices:
November 1, 2019 New Trademark Law in China implemented
“Section 4. Any malicious trademark application that is not intended for use is rejected“
December 1, 2019China’s State Administration for Market Regulation has begun to implement the Rules on the Regulation of Acts of Filing of Trademarksspecifying the applicable circumstances and the considerations of article 4 of the new Trademark law.
November 23, 2021the CNIPA has announced new
Trademark Review Guidelines and testrefining nine applicable scenarios for Article 4 of the new
Trademark lawand lists typical cases for each applicable situation.
China’s tougher stance on malicious brands in practice
Previously, trademark squatters could easily obtain Chinese trademark registrations that were very similar – or even identical – to famous foreign brands. With the revision of
Trademark law and the promulgation of new rules in China, we have seen an encouraging trend of CNIPA and PRC courts being more willing to issue decisions with an open mind. They often cite bad faith as a ground for objection in trademark squatter applications, resulting in greater protection of trade name and trademark rights of reputable foreign brand owners in China.
Spruson & Ferguson has won a growing number of opposition proceedings, whereby similar trademark applications for dissimilar goods filed by trademark squatters are denied registration. Our customers have has benefited from the decisions of the CNIPA whereas the opposing marks were filed in bad faith in the following typical situations:
- The opposite mark is identical to the earlier mark enjoying a certain notoriety of the owner of the mark, and the opposing party has applied for many other marks very similar to the marks of other mark owners; and
- The opposing mark is virtually identical to the Mark Owner’s earlier mark, and the opposing party has requested several other marks that are very similar to the Mark Owner’s artwork.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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