On December 14, 2023, the Beijing Intellectual Property Court released its top 10 typical cases regulating bad faith trademark registrations. Among them, administrative cases cover the application of absolute grounds and relative grounds of the Trademark Law, and the regulatory targets include trademark registrants and trademark agencies. These cases further clarify the judgment dimensions and identification standards of bad faith trademark registrations. Civil cases include both abuse of rights by trademark owners and cases in which punitive damages are applied in accordance with the law to infringers with obvious bad faith intent and those that cause serious infringement consequences.
Case 1 – File numerous trademark applications in a short period of time without proving the true intention of use or provide other genuine reasons, which constitutes "bad faith registration without purpose of use" as referred to Paragraph 1 of Article 4 of the Trademark Law.
Summary of the decision:
To review and determine whether the applied trademark
falls under the said circumstances, courts must consider the number
of registered trademarks applied for by the applicant, including
natural person, legal person, or other organization related to it,
the classes designated for use, and trademark transactions. Factors
such as the applicant's industry, business conditions, and
whether the trademark filed for registration is the same as or
similar to someone else's famous trademark. If a large number
of trademarks are filed in multiple classes of goods or services in
a short period of time, which obviously exceeds the normal
production and operation needs, and the applicant cannot prove the
true intention of use or other legitimate reasons, it should be
deemed as a registration in bad faith without the purpose of
use.
Case 2 – If the current or former legal representative, senior managers, and other staff of the trademark applicant worked for others, and they knew that others had previously used the trademark, but preemptively registered a similar trademark on similar goods, it is deemed as a violation of Paragraph 2 of Article 15 of the Trademark Law.
Summary of the decision:
"Other relationships" stipulated in Paragraph 2
of Article 15 of the Trademark Law refers to situations
where there are specific relationships other than those stipulated
in Paragraph 1 of Article 15, and the existence of unregistered
trademarks of others can be known and should be actively avoided.
The applicant and the prior user have kinship, employee
relationships, business address proximity, etc. The current or
former legal representative, senior managers and other staff of the
trademark applicant worked for others, which constitutes
"other relationships" stipulated in this Paragraph.
Anyone who knows that others have previously used a trademark
through the above relationship but preemptively register a similar
trademark on similar goods violates Paragraph 2 of Article 15 of
the Trademark Law.
Case 3 – If a trademark applicant files a trademark containing a geographical indication but cannot prove that the designated goods come from the scope of protection of the protected products from that geographical indication, it should be determined that the use of the disputed trademark is likely to mislead the public.
Summary of the decision:
The protection of geographical indications is intended to
prevent goods that do not originate from the geographical
indications from misleading the public by using such trademarks.
Thereby, ensuring the specific quality, reputation or other
characteristics of goods using trademarks containing geographical
indications are mainly determined by the natural or human factors
of the geographical indication. If there is no evidence to prove
that the goods come from the scope of protection of the protected
goods of that geographical indication, and the trademark filing
contains such geographical indications, it should be determined
that the use of the trademark is likely to mislead the public.
Case 4 – The names of TV columns and programs with certain influence constitute prior rights stipulated in Article 32 of the Trademark Law. If a trademark applicant squatted an identical or similar trademark on the same or similar goods, he shall be subject to the regulations under Article 32.
Summary of the decision:
TV columns and programs have the attributes of goods, and
the names of TV columns and programs that have certain influence
are "goods names that have certain influence" as
stipulated in Article 6 of the Anti-Unfair Competition Law
and constitute "priority rights" as stipulated in Article
32 of the Trademark Law. Therefore, if a trademark
applicant squatted a trademark with identical or similar title to
someone else's TV column or program that has a certain
influence on identical or similar goods, it is easy to confuse the
relevant public to mistakenly believe that the trademark applicant
has a specific connection with the owner of the prior right, which
constitute "damage to the prior rights of others"
stipulated in Article 32 of the Trademark Law.
Case 5 – If a trademark applicant applies for the registration of a large number of trademarks based on public event terms and names of public cultural resources for the purpose of improperly occupying public resources, this constitutes "obtaining registration by other unfair means" as specified in Paragraph 1 of Article 44 of the Trademark Law.
Summary of the decision:
"Obtaining registration by other improper means"
as mentioned in Paragraph 1 of Article 44 of the Trademark
Law refers to disrupting the order of trademark registration,
harming public interests, improperly occupying public resources, or
seeking improper benefits by means other than deception. A
trademark applicant who applies to register a large number of
trademarks for public event terms and public cultural resource
names has the subjective intention to improperly occupy public
resources and should be deemed as "obtaining registration by
other improper means" as stipulated in Paragraph 1 of Article
44 of the Trademark Law.
Case 6 – A trademark agency files a trademark in the name of its former executive in order to bypass the regulation, such filing can be regarded as filing by a trademark agency as regulated by Paragraph 4 of Article 19 of the Trademark Law.
Summary of the decision:
Paragraph 4 of Article 19 of the Trademark Law
clarifies the circumstances under which trademark agencies are
prohibited from registering trademarks. The legislative intent is
to protect public interests and prevent trademark agencies from
taking advantage of the convenience or advantage of being familiar
with the trademark registration process to squat others'
trademarks for profit, disrupting the order of trademark
registration. The act of a trademark agency applying to register a
trademark in the name of its former executive can be regarded as an
act of the trademark agency and shall be subject to Paragraph 4 of
Article 19 of the Trademark Law.
Case 7 – Regarding the applicant's malicious cross-class squatting of a well-known mark of others on the Internet, factors such as the applicant's subjective bad faith on the Internet and whether the relevant public for goods or services are highly overlapping should be fully considered to reasonably determine the scope of cross-class protection of the well-known mark.
Summary of the decision:
When determining whether a trademark on the Internet
constitutes a well-known mark, the characteristics and speed of
information dissemination on the Internet, the establishment of
brand influence, and the regions of influence, etc. should be fully
considered. Various factors for the identification of a well-known
mark should be comprehensively considered. For actors who squatted
other's well-known mark on the Internet in other classes,
factors such as the squatter's degree of subjective bad faith
and whether the relevant public for goods or services are highly
overlapping should be fully considered to reasonably determine the
scope of cross-class protection for well-known marks. This will
intensity regulation of the scope of protection of well-known
marks.
Case 8 – The applicant knew that the registered trademark had major rights defects but still used it as the main purpose to obtain unfair commercial interests and harm the legitimate rights and interests of others, and sent demand letters to others and filed administrative complaints. Such acts seriously violated the principle of good faith and constituted abuse of trademark rights.
Summary of the decision:
A trademark registrant knew that the registered trademark
has major rights defects, but still sent demand letters to others,
filed administrative complaints, etc. with the main purpose of
seizing unfair commercial interests and harming the legitimate
rights and interests of others. Such acts seriously violate the
principle of good faith and constitute abuse of trademark rights.
The trademark registrant shall be liable for compensation in
accordance with the law for the necessary expenses incurred by the
allegedly infringed party to safeguard their legitimate rights and
interests and respond to the trademark registrant's abuse of
trademark rights.
Case 9 – A party who violates the principle of good faith by filing a trademark infringement lawsuit against others' fair use of trademark rights based on trademarks obtained with bad faith constitute abuse of rights.
Summary of the decision:
The granting and exercise of trademark rights shall abide
by the principle of good faith. If a party violates the principle
of good faith and files an infringement lawsuit against others'
fair use of trademark rights based on trademark obtained with bad
faith, it not only harms the legitimate rights and interests of
others, but also disrupts the order of fair competition in the
market, constituting abuse of rights, and its claims should be
dismissed in accordance with the law.
Case 10 – Where the infringer carried out "all-round" imitation of the right holder's well-known brand in all aspects, including trademarks, product packaging, slogans, sales methods, etc., and there was mixing genuine and counterfeit goods, the infringer is said to have taken advantage of the right holder's goodwill in obvious bad faith and such consequences of infringement are serious, and punitive damages should be applied.
Summary of the decision:
Unlike infringement that only targets a single trademark,
"all-round" brand imitation has a greater impact on brand
image and rights. The specific patterns may include registering and
using trademarks that are similar to the rights holder's
trademark, imitating packaging and decoration, mixing and matching
genuine and counterfeit products for sale, using misleading
slogans, etc. For such serious infringements of
"all-round" imitation of previously well-known brands,
punitive damages should be applied.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
