In order to reduce trademark squatting, the Chinese Trademark Law of China (2019 Version) (“Trademark Law 2019”) introduced an intent to use requirement as well as a good faith requirement. As will be discussed further below, recent Chinese court cases show that the introductions did in fact provide newly effective means to challenge squatters.
· Overview of the relevant articles in the Trademark Law 2019
The relevant articles of the Trademark Law 2019 include:
Article 4
A malicious application for trademark registration not filed for the purpose of using the trademark shall be refused.
Article 7.1
The good faith principle shall be upheld in the application for trademark registration and in the use of trademarks.
Article 44.1
A registered trademark shall be declared invalid by the Trademark Office if […] its registration is obtained by fraudulent or other improper means. Other entities or individuals may request the Trademark Review and Adjudication Board to declare the aforesaid registered trademark invalid.
These are the key articles that shall be applied when the China National Intellectual Property Administration (CNIPA, formerly the Trademark Office and Trademark Review and Adjudication Board) and the courts (Beijing Intellectual Property Court and Beijing High People’s Court) establish a lack of good faith case. Typically, at the opposition stage, examiners tend to apply Articles 7, while Article 44.1 is commonly invoked in invalidation actions; and we expect to see more application of Article 4 after the amendment of the Trademark Law 2019 that explicitly added the requirement of “intent to use” for filing trademark applications. Different from the CNIPA, the courts tend to apply Article 44.1 not only to invalidate registered trademarks, but also against applications pending in opposition proceedings. In recent years, there has been an increasing reliance on Article 44.1 in cases where the applicant squatted quite a number of others’ famous marks. Continue Reading