Infringement claims from bad-faith trademark registrant

In our column in September 2017, the author discussed how a foreign rights holder should respond to the pirate registration of its trademark in China. That article focused more on looking at the strategy for responding to the pirate registration of foreign brands in China as a whole, and on the ways to use the most economical and effective means while taking into account registration of trademarks by class, negotiations with pirates, commercial strategies, etc., to take action and achieve better results.

With the exception of actions to invalidate or cancel a trademark registered in bad faith, not much was said on how to respond to a claim of trademark infringement made by a pirate. Once a bad-faith registrant succeeds in the pirate registration of a trademark, if it actively takes action against the client on the basis of its pirated trademark, e.g., by carrying out customs recordal or going as far as instituting an infringement suit, the same will have a relatively major effect on the client. Accordingly, it is also necessary to duly prepare against a claim of infringement of a trademark registered in bad faith.

Until the implementation of the amended Trademark Law on 1 May 2014, in practice, regardless of whether an application for trademark registration was clearly made in bad faith, as long as there was no prior registration of, or application for, an identical/similar trademark for identical/similar goods or services, it would usually pass preliminary examination; and if no opposition was filed by the end of the gazette period, its registration would be approved. Furthermore, as long as it was a valid trademark, the judicial authority would generally uphold a claim of trademark infringement.

Frank Liu is a partner at Jincheng Tongda & Neal