On April 13, 2022, CNIPA issued the “Notice on the Continued Suppression of Malicious Trademark Registrations” (hereinafter referred to as the “Notice”), continuing to uphold the high-pressure “zero tolerance” posture and the standardized mode of repression. The Notice pointed out that enhanced efforts will be made to combat malicious hoarding and preemptive trademark registration, which are evidenced by trademark “hoarding” and “parasitism” activities, in accordance with the regulations on malicious trademark registration applications. without intention of use as in the “Guidelines for Trademark Examination and Trial”.
To implement the new provision on “malicious application for trademark registration without intention of use” in Section 4 of the Trademarks Act 2019, the “Guidelines for Examination and Trial of Trademarks “newly amended on January 1, 2022 listed 10 applicable cases in detail, while the notice issued this time further supplemented and refined the situations listed in the guidelines, specifying 10 cases requiring severe punishment. Among them, newly added situations to enjoined malicious preventive registration include: 1) identical or similar signs to important CPC meetings, important theories, scientific conclusions, political speeches, etc. ; 2) signs identical or similar to national strategies, national policies, major projects, major scientific and technological projects, notorious events, exhibitions, archaeological discoveries, etc. ; 3) unique words for major sensitive events and emergencies such as major public health events; and 4) the names of famous public figures in fields such as politics, economics, culture, nationality and religion.
It should be noted that the malicious cases listed in the Guidelines for Examination and Trial of Trademarks all emphasize the principle of “large number” or “repetitive” applications for registration, while the four new cases mentioned above in the Notice are not subject to these conditions, which means that the review of these highly sensitive words or symbols in the political, social and economic spheres tends to be put highuh pressure of “zero tolerance”. Similarly, the first of the 10 situations described in the Guidelines for Examination of Trademarks is “trademark applications are very numerous, which manifestly exceed the needs of normal business activities and lack the intention of actual use , which disrupts the order of registration of the mark”. However, this notice directly removed the premise of “a large number of requests”, which may mean that, in the context of a severe repression, even if the number of youtrademark applications by some entity is not “huge”, once the applications are judge that “the number obviously exceeds the Needs normal business activities” and that they “lakek actual intention of use”, they or they will still constitute the situation prohibited under Article 4 of the Trademark Law. The specific implementation of this article has not yet been observed, but its wording suggests that in today’s environment of high pressure for severe repression, the absolute number of trademark applications is not a prior factor for judging. whether the requests belong to the prohibited cases. Rather, the factors lie in the overall situations of the plaintiffs and their marks.
Besides, for the first timethe Notice listed illegal agency services by brand agencies for malicious trademark applications without intention of use as case for severe repression. She stressed the need to implement a strict registration management system for trademark agencies and strengthen the real-name registration system for agency employees as well as the company signature system. In addition, illegal agency case clues for malicious trademark registration will be transferred to local intellectual property administrations and centralized investigation will be organized. If the circumstances are serious, the management of trademark agency business will be prohibited. He also mentioned cracking down on illegal malicious trademark registration agencies through means such as interview recall, rectification, inspection, supervision and administrative penalties, and publication of the decision on administrative penalties.
Review needed improvement the watch list of top filers of malicious trademarks with no intention to use the trademark throughout the registration process. All local intellectual property administrations and trademark examination and coordination centers should remind and deter market participants suspected of engaging in malicious trademark registration, and submit the relevant indicia to the provincial administration of intellectual property for summary and verification to compile a list and then submit it to the competent authority. CNIPA. If Market Entities on the Key Watch List conduct trademark business, they will be subject to strict scrutiny in accordance with law and their burden of proof in actual use will be increased. The notice also required sharing the information listed on serious law violations and dishonesty with other relevant departments in accordance with laws and regulations, and imposing common penalties on the subjects on the list. Besides, as key dishonesty watchdogs, they are not allowed to benefit from policies and practical measures such as expedited trademark application review.
The Opinion clearly put forward a new concept of “cancellation of marks for non-use for three consecutive years for public interestsguiding social forces to participate in the governance of trademark registration order from the source and promoting the orderly release of unused trademark resources. He also proposed to strengthen the organic link between the administrative and judicial systems, establish an information-sharing mechanism and a pre-litigation communication mechanism for major cases, promote consistency in review standards and authorization, administrative law enforcement standards and judicial judgment standards, and improve the articulation between administrative and judicial procedures to deal with batch cases.
In order to curb all-out malicious hoarding, the Notice also proposed to optimize trademark royalty standards and promote the establishment of a note royalty system. It also required all local intellectual property authorities to stop using the trademark registration number as the primary basis for evaluating work. Supporting requests for youtrademark registration (including international registration under the Madrid system) in any form, such as grants and awardsand cancellation of grant and award policies will be on the agenda.
Attaché: CNIPA Opinion on the Continued Repression of Malicious Trademark Registrations http://sbj.cnipa.gov.cn/tzgg/202204/t20220413_21839.html