Judicial remedies for bad-faith registrations of trademarks

Q: What is bad-faith registration of a
trademark?

A: The term “bad faith registration of a trademark” means the act of using improper means to preemptively register the trademark of another that is already being used and has a significant influence in the relevant sector, for the purpose of profiting from it.

Article 31 of the Trademark Law specifies that, “An application for the registration of a trademark may not prejudice the existing prior right of any third party nor may improper means be used to preemptively register a third party’s trademark which is already in use and which has a certain degree of influence”.

Q: What judicial remedies are available once the bad-faith registration of a trademark has occurred?

A: Pursuant to the current Trademark Law and related regulations, the main means of judicial remedies available to the rights holder are as follows:

Administrative procedure: the second paragraph of article 41 of the Trademark Law specifies that, “If a registered trademark violates articles 13, 15 or 31 hereof, the owner of the trademark or any interested party may, within five years from the date the trademark is registrated, request that the Trademark Review and Adjudication Board make a ruling to cancel the registered trademark. However, the owner of a well-known trademark shall not be subject to such five-year time limit if the trademark was registered in bad faith”. Accordingly, once improper means have been used by another to preemptively register a trademark, the rights holder may request the board to cancel the registered trademark within the time limit.