Article 44 of trademark law: old rule, new application

Instances of large-scale pirating in bad faith where an entity simultaneously preemptively registers several dozen or several hundred trademarks are no longer news in China. Recently, as a result of the final-instance judgments in the administrative cases about Apple’s trademark “IPHONE” and Facebook’s trademark “FACEBOOK”, and retrial decision by the Supreme People’s Court (SPC) of the administrative trademark case relating to the name Michael Jordan, the issue of large-scale preemptive registration in bad faith has once again drawn attention.

The Trademark Law as amended in 2013 (the new TML) incorporates the principle of good faith, presenting an opportunity to effectively squelch pirate registrations, including “large-scale preemptive registration in bad faith”. Against this background, the new application of an old provision also reflects the direction of halting preemptive registration in bad faith. Article 44 of the new TML specifies that, “where fraud or other illegitimate means are used to secure registration, the Trademark Office shall declare the registered trademark in question invalid”. Although this provision itself is identical to article 41 of the 2001 version of the Trademark Law, its new application has recently played a prominent role in the handling of a number of cases of large-scale preemptive registration in bad faith.

In past cases of preemptive registration in bad faith, the commonly used legal basis included provisions of the Trademark Law on the following matters: pirating by agents and representatives; not harming the priority rights of others; and reproduction, copying and translation of the well-known trademarks of others. The Trademark Law does not contain any special provisions on “large-scale preemptive registration in bad faith”.

Han Yufeng is an IP counsel and Lu Lei is a partner with Run Ming Law Office