Trademark Law clamps down on pirate registration of trademarks

In recent years, cases of pirate registrations of trademarks in bad faith have been a frequent occurrence, even spawning a group of “professional pirate registrants” who specialise in the pirate registration of others’ trademarks to make a profit, with a certain number of agencies engaging in the provision of trademark legal services even taking a hand therein, adding fuel to the fire.

First to file principle

The feature common to pirate registrants is their exploitation of the first to file principle of the Trademark Law, searching for trademarks that have a certain degree of notoriety in China or abroad but have not been registered on the mainland, and compelling the victims of the pirate registrations to “buy back” their trademarks if they wish to continue to lawfully use and register them. However, at such a juncture, the transfer price proposed by the pirate registrants will often freeze the victims in their tracks. This phenomenon damages China’s image and is in sore need of resolution.

The measures to rein in the pirate registration of trademarks are some of the key provisions that were added to the third amendment to the new Trademark Law, which was promulgated by the National People’s Congress standing committee on 30 August 2013.

Wang Yadong is the executive partner and Lu Lei is a partner at Run Ming Law Office