▍ Patent practice - Filing Divisional Applications in China
Karson Yang | May 28 2022
Background
In recent years, the number of trademark applications in China has been at the forefront of the world. In 2021 alone, the total number of new trademark applications in China was nearly 9.45 million. Especially with the explosive growth of small and micro enterprises and the rising of service-oriented consumption, the demand for trademark applications has been increasing rapidly. Facing such a huge number of trademark applications each year, China’s Market Supervision Department has implemented new policies and reformed the trademark registration system, including optimizing filing procedures, shortening the examination cycle, and reducing filing costs. Thus, all business entities in the market will be able to enjoy faster and more high-quality trademark registration services. However, fighting against malicious hoarding and preemptive registration is still a challenge.
In order to further optimize China’s business environment and curb malicious trademark applications more effectively, the 13th Standing Committee of the National People’s Congress decided to amend the Trademark Law. In April 2019, “trademark application filed in bad faith for purpose other than use shall be rejected” was added to the first clause of Article 4. In addition, the latest Guidelines for Trademark Examination were implemented correspondingly on January 1, 2022.
Interpretation
How should we interpret the two keywords “use” and “bad faith” in this newly added provision? With regard to the “use” of trademarks, Article 48 of the Trademark Law stipulates:
According to this paragraph, uses are not for the purpose of identifying the source of goods or services that do not belong to the “use” defined in the Trademark law.
Unlike the “first-to-use” in the US trademark law, China follows the principle of “first-to-file”. Applicants do not need to provide any evidence of use when filing a trademark application. Some applicants, especially those who consciously improve the protection of core trademarks through planning and strategic deployment, may ask: if I file a series of defensive trademarks for my core trademark, will these applications be rejected due to “purpose other than use” according to this new clause?
To answer this question, Guidelines for Trademark Examination 2021 clearly states that “An applicant files the applications for identical or similar trademarks to its registered trademarks for the purpose of defense” and “An applicant files an appropriate amount of trademark applications in advance for the future business with realistic expectation” are not applicable to Article 4 of the Trademark Law. In addition, the Constitution and Law Committee of the National People’s Congress studied this Article and finally added the word “bad faith” as a limitation to this clause.
There is no clear definition of the term “bad faith” in China’s Trademark Law. However, with regard to the acts of bad faith, generally, two aspects below should be considered.
Nevertheless, there are some differences between “application in bad faith for purpose other than use” in the title of this article and other malicious applications such as “free-riding” and “clout-chasing”. The bad faith of the former is reflected in the lack of intention to use and deliberately occupy a large number of trademark resources to the detriment of public interests, while the latter damages the legitimate rights and interests of specific subjects through preemptive applications. Certainly, Article 4 of the Trademark Law also applies to such malicious acts. If the number of trademarks filed in bad faith is large, it causes damage to specific subjects, the market order, and public resources altogether.
The word “bad faith” in the newly revised provisions is a supplement to “purpose other than use”. It specified that a trademark application filed “for purpose other than use” should be rejected only if being judged as “bad faith”.
Section 5 of Chapter Two in Part II of the Guidelines for Trademark Examination 2021 defined ten acts that belong to “application for trademark registration in bad faith for purpose other than use”, including:
Tips
In the light of the preceding insights, enterprises and individuals may refer to some of the following suggestions when pursuing trademark protection for their own brands:
We hope that each applicant while taking the initiative in trademark protection, can respect the trademark law, develop a good trademark registration strategy, comply with the filing requirements and formalities, consistent and proper use of trademarks, and help to maintain a healthy business environment.
Add:Suite 910, Tower A, Winner Plaza 100 Huangpu Avenue West, Tianhe District, Guangzhou, 510627, China
Tel:+86-(0)20-38033421
Fax:+86-(0)20-38061201
Web:https://www.jiaquanip.com
Copyright © Jiaquan IP Law. All Rights Reserved. 粤ICP备16000884号