How tough is bad-faith trademark filing getting?

Since 2008, the development of intellectual property has been a national priority in China. As for trademarks, the volume of applications has consistently grown in the past 15 years, reaching the staggering number of 3.69 million in 2016.

One consequence is the proliferation of so-called “pre-emptive trademark applications” filed in bad faith. The central government is increasingly aware of this situation. The revised Trademark Law, effective since May 2014, had already introduced, apart from the general principle of good faith in article 7, some specific measures in article 15.2. This article provides that trademark applications should be refused where they are made by persons who, for various reasons, are fully aware of the existence of a prior unregistered trademark.

On 10 January 2017, the Supreme People’s Court (SPC) issued the Provisions on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights, which entered into effect on 1 March 2017. According to provision 15, the terms “agent” or “representative” in article 15.1 of the Trademark Law should be construed widely and include any persons having a kin or any specific relationship with such an agent, even if negotiations have taken place without being concluded. Likewise, the term “other relations” used in article 15.2 of the law covers a wide range of circumstances, including family relationship, labour relations, business location in the proximity, and unconcluded negotiations, as provided in provision 16.

Author: Ren Haiyan is a senior partner and Lei Yongjian is a partner at Wan Hui Da