China: China Tackles Bad-faith Trademark Registrations

Last Updated: 3 October 2019
Article by Ai-Leen Lim, Ashley Zhao and Julia Wang

The China National Intellectual Property Administration has published Draft Regulations in an effort to tackle bad-faith trademark applications. In this article, we take a closer look at the (i) Draft Regulations for Regulating the Application for the Registration of Trademarks, (ii) revisions to the PRC Trademark Law (wef November 1, 2019) and (iii) recently issued Guidelines from the Beijing Higher People's Court on the topic.

Trademark Regime

China has a first-to-file trademark regime, making it imperative that businesses apply for registration at the earliest opportunity. There is a classification and sub-classification system that is peculiar to China. China divides each Class into sub-classes/parts/paragraphs and treats each sub-class/parts/paragraphs as a discrete unit. A trademark registration gives the owner rights in the covered sub-classes/parts/paragraphs, but virtually no rights in any other sub-classes/parts/paragraphs within the same Class and good and services falling within the same Class but in different sub-classes are considered dissimilar.

It is therefore necessary to register under as many categories and sub-categories as financially possible. Enterprises should always think ahead and register under strategic categories.

Trademark squatting is rampant in China. Businesses are vulnerable because of the first-to-file system rather than the first-to-use. Owners can never assume that by registering a trademark elsewhere, it will be recognised in China as well. The Chinese system does not recognise trademarks registered in other jurisdictions and will grant protection only to those who file first in China, regardless of the use or intent to use.

Squatters exploit the differences in legal systems and register international brands predicting their entry into China. Once they enter China, the squatters try to sell them back their own trademark to earn profits. Some squatters even use the reputation of an international brand to set up their own companies and make a profit on the original brand's value.

Relying only on the Madrid Protocol (International Registrations) is not advisable either. When you file a Madrid application (typically based on a western style description of your claim of goods/services), your list of items goes straight to a China Trademark Office examiner, who will decide from your list which sub-classes the items should go in without consultation.

The sub-classes decided by the examiner based on their understanding of your goods/services description may not fully or correctly cover the sub-classes where they should fall intoand in any event, even if the China Trademark Office grants the territorial extension, you will face challenges in enforcing your trademark rights against infringers or bad faith applicants due to the fact that you might not have blocked off all sub-classes in your registration. It is advisable for trademark owners to consult local counsel and file supplemental national applications to register their trademarks in all relevant Classes and sub-classes to secure optimum protection, if the international registration is found insufficient to protect their rights in China.

Draft Regulations

In response to this bad-faith application regime, the China National Intellectual Property Administration (CNIPA) published Several Provisions for Regulating the Application for the Registration of Trademarks (Draft) on February 12, 2019.

The Draft contains eight articles concerning the types of bad-faith applications, measures that can be taken according to the PRC Trademark Law, additional measures that go beyond the scope of the Trademark Law and guidance for IP authorities to report and supervise bad-faith applications.

Articles 1 and 2 clarify the purpose of the Draft and reaffirms the principle of good faith established by the PRC Trademark Law.

Article 3 sets out eight clauses under which applications for marks can be deemed abnormal:

  1. Applying a trademark registration that is familiar to the relevant public and passing off the business reputation of another;
  2. Pre-emptively applying for a trademark registration that has been used by others and has obtained a certain influence, and improperly extracting the business reputation of another;
  3. Pre-emptively applying for a trademark registration that is the same or similar to that of another, when one knows or should have known of the existence of the other's prior rights;
  4. Applying repeatedly for trademark registration with obvious improper purposes;
  5. Applying for a large number of trademark applications within a short period of time that obviously exceeds reasonable limits;
  6. Applying for a trademark registration without genuine intent to use or without an actual need to obtain exclusive trademark rights on goods or services;
  7. Engaging in other acts when applying for trademark registration that violate the principles of honesty and good faith, infringe upon the legitimate rights and interests of others or disrupt the market order;
  8. Helping others or trademark agencies with trademark applications using the actions mentioned in items 1 to 7.

Article 4 clarifies the legal consequences of abnormal trademark applications for trademark registration. This article lists the punishments and consequences of filing abnormal applications and is designed to warn off potential bad-faith squatters and to educate the public. The Draft allows the China Trademark Office, part of the CNIPA, to issue an office action to an applicant requesting evidence and explanation to support the legitimacy of the filing.

Article 5 provides additional measures beyond the PRC Trademark Law to tackle abnormal acts when applying for trademark registrations. The applicants of abnormal trademarks will be published on the CNIPA's website and in the China IP Daily. The information will also be recorded on the national social credit platform. In addition, the departments responsible for intellectual property (at all levels) will not give any subsidies, support or rewards for abnormal applications. Article 5 also implores reimbursement if abnormal acts are identified after a subsidy, support or reward has been granted. If the circumstances are serious, the applicant or its affiliates shall be banned from receiving subsidies, support or rewards for a period of five years, and if a crime has been constituted, criminal responsibilities shall be affixed.

For trademark agencies that are engaging in abnormal trademark applications, the CNIPA will conduct an interview for rectification with the Legal Representatives of such trademark agencies and the trademark association will take self-regulatory measures against the agencies and the relevant trademark agents. Furthermore, the number of abnormal trademark applications will be deducted from the statistics of the number of trademark applications made by the CNIPA.

Article 6 states that before engaging in the measures listed in Article 5 the parties involved are to be granted an opportunity to present their opinions when necessary.

Article 7 requests any department responsible for intellectual property to promote the development of intellectual property rights in China. This includes actively guiding the public and trademark agencies to apply for registrations in accordance to the law. It also states that a report may be filed to the CNIPA when an organisation or individual discovers abnormal acts in relation to an application for a trademark registration with the CNIPA requested to promptly handle the report.

Article 8 sets for a date for when the Regulations shall come into effect (this remains blank at this time as the Regulations are in draft format).

Public Consultation

The Draft was open to public consultation until March 14, 2019 with Chinese and foreign industry associations submitting recommendations to clarify key provisions.

The International Trademark Association (INTA) submitted their comments on March 14. Overall INTA commends the initiative to deal with bad-faith registrations. However, the Association noted some ambiguity in the Articles in the Draft.

Specifically, INTA suggested there be a clearly-defined criteria and processes for determining abnormal trademark applications. It also requested that Article 3 be clarified to include parties who file bad faith applications in small quantities. With INTA members observing that a large proportion of cases involving bad faith applications in China are under these circumstances.

The American Intellectual Property Law Association (AIPLA) also submitted comments on the Draft. It is interesting to note that Association requested that the defensive trademark applications by Chinese and foreign enterprises to protect widely-recognised, well-known and familiar marks not be considered bad faith trademark applications under Article 3 of the Draft.

The AIPLA also notes it hopes that the Draft will be successful in combatting bad-faith trademark applications that defensive trademark applications were no longer necessary in China.

Revision to the Trademark Law (wef November 1, 2019)

In addition to the Draft Regulations, the PRC Trademark Law was revised this year with a focus to curb and tackle bad faith filings. The revised law was promulgated on April 23, 2019 and it will become effective on November 1, 2019.

The revision adds clear language to Article 4 of the law that applications for trademark registration that are malicious and not filed for the purpose of use shall be refused. The updated Article 4 is referenced throughout the law including in Article 19.3 with respect to trademark agencies, stipulating that the trademark agencies shall not accept filing instructions if they know or should have known that the trademark application entrusted by the client is a bad faith filing violating Article 4. The amended Article 4 is also referenced in Article 33 in terms of raising objections to the Trade Office against a trademark that has been published after a preliminary examination within three months from the date of announcement.

Article 44.1 states that the Trademark Office shall annul any registered mark if it violates Article 4. Lastly, Article 68 states the circumstances under which the trademark agencies and the relevant responsible persons shall be punished and the updated Article 4 has also been referenced. Article 68 has also assessed that in the event of any malicious application for trademark registration, administrative penalties such as giving a warning and imposing a fine shall be given depending on the specific circumstance. In cases where a lawsuit has been maliciously lodged regarding a trademark, the People's Court shall impose penalties in accordance with the law.

This amendment provides a clear legal basis for cracking down on malicious registrations in the course of trademark application, opposition, invalidation and trademark agency proceedings. Currently to oppose a bad faith trademark application, the prior right owner is required to firstly prove they are the prior right owner/interested party with qualified evidence so the opposition can be accepted by the China Trademark Office. This can be challenging for trademark owners who have not used their own marks in China or have not entered into the China market as they may fail in oppositions due to lack of evidence. When the revised Trademark Law becomes effective, owners can oppose bad faith applications violating Article 4 withoutthe requirement to prove their prior rights.

New Beijing Higher People's Court Guidelines

On April 24, 2019, the Beijing Higher People's Court issued Guidelines for the Trial of Trademark Rights Granting and Verification Cases. The Guidelines are already effective. In the Guidelines, the Court stipulates the application of Article 4 of the Revised Trademark Law as:

If any trademark applicant obviously lacks the true intention of use and is under any of the following circumstances, this applicant may be determined to violate the provisions of Article 4 of the Trademark Law:

  • applying for registration of the trademark identical with or similar to that of various subject with certain popularity or higher distinctiveness, which is regarded as a serious circumstance;
  • applying for registration of the trademark identical with or similar to that of the same subject with certain popularity or higher distinctiveness, which is regarded as a serious circumstance;
  • applying for registration of the trademark identical with or similar to any other commercial signs other than trademarks of others, which is regarded as a serious circumstance;
  • applying for registration of the trademark identical with or similar to any name of place, scenic spot, building and others with certain popularity, which is regarded as a serious circumstance;
  • applying for registration of a large number of trademarks without good reasons.

If the trademark applicant above claims the true intention of use, but fails to present the relevant evidence, this claim shall not be supported.

The Guidelines provide for the courts to apply the relevant provisions (including Article 4) of the PRC Trademark Law to specific cases and they apply toall the trademark administrative litigations handled by Beijing IP Court and the Beijing Higher People's Court.


Bad-faith applications disrupt the economic order of a marketplace and put tremendous strains on trademark management. It is clear from the Draft Regulations, the Revised Trademark Law and the Beijing Court's Guidelines that bad-faith applications have become an urgent topic in China.

The shifts in legislation are a clear and positive sign of a country that is increasingly recognising the true value of intellectual property. It is unclear at this stage to what extent the Draft Regulations will evolve from its current format. It is hoped that there will be greater clarity throughout the Articles.

Considering the substantial number of trademark applications in China – 7.371 million in 2018, it is increasingly important for trademark owners to file for registrations as early and as comprehensively as possible.

China is a unique market and requires special attention in terms of intellectual property rights. Owners require a strategy that not only builds a robust portfolio, but one which actively maintains that portfolio with on-the-ground support in China, ready to respond and act upon threats as well as infringements.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
CCPIT Patent & Trademark Law Office
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
CCPIT Patent & Trademark Law Office
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions