Pirate registrations of trademarks should be put to the sword

The phenomenon of the pirate registration of popular trademarks has grown increasingly serious in recent times. From basketball stars Michael Jordan, Kobe Bryant and Yao Ming to Olympic champions Ye Shiwen and Sun Yang, from performing star Zhang Ziyi to piano maestro Li Yundi – none have been spared. Some famous foreign brands may have similar experiences: when planning to apply for registration in China, they unexpectedly find there are already goods that bear a trademark similar or even identical to their own.

With their “registered trademarks”, pirate registrants sit and wait for their price, or assert their “rights” against the foreign trademark rights holders, or use a famous person’s name as a gimmick to enhance public awareness of their brands.

The reason that the bad faith pirate registration of trademarks has flourished can be traced to the weaknesses in the trademark system. The Trademark Law specifies that the Trademark Office is to determine ownership of a trademark based on the first-to-file principle – that is, whoever files an application first secures the exclusive right to use the trademark – but does not set forth any corresponding auxiliary provisions to control pirate registrations. The upshot is that once a pirate registrant’s application is successful, the pirate has the lawful exclusive right to use the “registered trademark” that was preemptively registered and, on such basis, can assert rights against the genuine rights holder.

Wang Yadong is the executive partner and Hu Cuiqin is a lawyer at Run Ming Law Office