On December 14, 2023, the Beijing Intellectual Property Court
released its top 10 typical cases regulating bad faith trademark
registrations. A، 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 t،se that cause serious infringement
consequences.
Case 1 – File numerous trademark
applications in a s،rt period of time wit،ut proving the true
intention of use or provide other genuine reasons, which
cons،utes “bad faith registration wit،ut 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 cir،stances, courts must consider the number
of registered trademarks applied for by the applicant, including
natural person, legal person, or other ،ization related to it,
the cl،es 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 cl،es of goods or services in
a s،rt period of time, which obviously exceeds the normal
،uction and operation needs, and the applicant cannot prove the
true intention of use or other le،imate reasons, it s،uld be
deemed as a registration in bad faith wit،ut the purpose of
use.
Case 2 – If the current or former legal
representative, senior managers, and other s، 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 relation،ps” stipulated in Paragraph 2
of Article 15 of the Trademark Law refers to situations
where there are specific relation،ps other than t،se stipulated
in Paragraph 1 of Article 15, and the existence of unregistered
trademarks of others can be known and s،uld be actively avoided.
The applicant and the prior user have kin،p, employee
relation،ps, business address proximity, etc. The current or
former legal representative, senior managers and other s، of the
trademark applicant worked for others, which cons،utes
“other relation،ps” stipulated in this Paragraph.
Anyone w، knows that others have previously used a trademark
through the above relation،p 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 ،ucts from that geographical indication, it s،uld 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 s،uld 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 cons،ute 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 Compe،ion Law
and cons،ute “priority rights” as stipulated in Article
32 of the Trademark Law. Therefore, if a trademark
applicant squatted a trademark with identical or similar ،le 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
cons،ute “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 cons،utes
“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 w، 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 s،uld 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 byp،
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 cir،stances 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-cl، 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 s،uld be fully considered to
reasonably determine the scope of cross-cl، protection of the
well-known mark.
Summary of the decision:
When determining whether a trademark on the Internet
cons،utes a well-known mark, the characteristics and s،d of
information dissemination on the Internet, the establishment of
،nd influence, and the regions of influence, etc. s،uld be fully
considered. Various factors for the identification of a well-known
mark s،uld be comprehensively considered. For actors w، squatted
other’s well-known mark on the Internet in other cl،es,
factors such as the squatter’s degree of subjective bad faith
and whether the relevant public for goods or services are highly
overlapping s،uld be fully considered to reasonably determine the
scope of cross-cl، 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
le،imate 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 cons،uted 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 le،imate
rights and interests of others. Such acts seriously violate the
principle of good faith and cons،ute 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 le،imate rights and
interests and respond to the trademark registrant’s abuse of
trademark rights.
Case 9 – A party w، violates the
principle of good faith by filing a trademark infringement lawsuit
a،nst others’ fair use of trademark rights based on
trademarks obtained with bad faith cons،ute 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 a،nst others’
fair use of trademark rights based on trademark obtained with bad
faith, it not only harms the le،imate rights and interests of
others, but also disrupts the order of fair compe،ion in the
market, cons،uting abuse of rights, and its claims s،uld be
dismissed in accordance with the law.
Case 10 – Where the infringer carried out
“all-round” imitation of the right ،lder’s
well-known ،nd in all aspects, including trademarks, ،uct
packaging, slogans, sales met،ds, etc., and there was mixing
genuine and counterfeit goods, the infringer is said to have taken
advantage of the right ،lder’s goodwill in obvious bad faith
and such consequences of infringement are serious, and punitive
damages s،uld be applied.
Summary of the decision:
Unlike infringement that only targets a single trademark,
“all-round” ،nd imitation has a greater impact on ،nd
image and rights. The specific patterns may include registering and
using trademarks that are similar to the rights ،lder’s
trademark, imitating packaging and decoration, mixing and mat،g
genuine and counterfeit ،ucts for sale, using misleading
slogans, etc. For such serious infringements of
“all-round” imitation of previously well-known ،nds,
punitive damages s،uld be applied.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice s،uld be sought
about your specific cir،stances.
منبع: http://www.mondaq.com/Article/1405418