Judicial interpretations tougher on pirate registrations

The trademark system in China has adopted the “first to file” principle, common in the great majority of countries, but the peculiarities of the social environment in mainland China, such as bad faith pirate registrations, have had a pernicious effect on this principle.

Bad faith pirate (or preemptive) registrations usually mean preemptively applying to register another’s prior trademark, trade name, image and title of a work, celebrity name, etc., that has already cumulated significant goodwill or a significant influence as a trademark before the rights holder has submitted an application to register the same, and then seeking improper gains through transfer, licensing or infringement legal action, or using the pirated trademark for one’s products or services, and so misleading the public into believing that the products or services in question are sourced from, or have a specific connection with, the victim of the pirating.

This bad practice has been a headache for rights holders for many years. Relevant authorities are constantly exploring effective measures to put a stop to this, e.g., the amendment of the Trademark Law in 2013. The Provisions on Several Issues Concerning the Trial of Administrative Trademark Right Granting and Confirmation Cases issued by the Supreme People’s Court on 1 January 2017 (the new judicial interpretations) provide guidelines for the specific application of relevant provisions of the Trademark Law.

Han Yufeng and Lu Lei are associates at Rui Bai Law Firm