Author: Zhang Ping, Zhang Hairuo from Twelve Tables Law Firm
March 24, 2021, China National Intellectual Property Administration(“CNIPA”) issued a nationwide special action plan to crack down bad faith and preemptive trademark filings.
According to the action plan, CNIPA will conduct a special operation from March 2021 to December 2021 to crack down on the bad faith and preemptive trademark filings, to enhance the quality of trademark filings, address social concerns over this issue, and help create a better environment for innovation and business.
This notice was addressed to the local Intellectual Property offices around the country, requesting for serious implementation.
The action plan identified 10 types of bad faith trademark filings which will be cracked down under this plan. Among the10 types, below 2 types of acts are of more interests to brand owners while the rest are more related to the public interests:
No. (6) filing to register the name of public figure, famous works or character names with high awareness as trademark in bad faith; and
No. (7) filing to register other’s trademarks with high popularity or strong distinctiveness, harming the existing prior rights and interests of others.
Besides, for trademark agency which knows or should have known that its client is engaged in filing bad faith trademark applications but still accepts entrustment, or for trademark agency which disturbs the market order by other improper means, such behaviors of trademark agency are also among the 10 types of acts to be cracked down.
The operation assigns each department a particular focus. For example, enforcement team will investigate when a case thread of trademark infringement in a trademark registration procedure is handled in and will enforce and even issue administrative punishment.
The plan is to be implemented in 3 phases:
1. Mobilization and deployment phase(March 2021)
The local intellectual property offices shall collect the case clues within their respective jurisdictions, which shall be summarized by the provincial (district, city) intellectual property office, and the local trademark examination and cooperation centers collect the clues in the trademarks to be examined by the center, which are reported to the CNIPA by March 30.
2. Implementation phase of the organization (April 2021-October 2021)
For case clues in-trademark registration procedures, the CNIPA shall guide the local examination centers to examine them in accordance with the law. For the case clues in the procedure of trademark opposition and invalidation declaration, the CNIPA shall pick up and examine a number of pilot cases and publish them as guidance.
For the case clue related to a major apparently suspected malicious trademark squatting, as well as clue of trademark related to major public emergencies or public concerns, shall be transmitted by the Protection Department of CNIPA to the intellectual property administration departments of the relevant regions for handling.
The local intellectual property offices at all levels shall carry out special rectification to the clues of cases transferred by their superiors. Administrative penalties-shall be imposed in accordance with the law for engaging in malicious trademarks quatting behavior in violation of the law.
3. Summarize and inspection (November 2021-December 2021)
The local intellectual property offices shall summarize the special actions carried out in their respective jurisdictions and report them to the CNIPA by December 10. The CNIPA will evaluate the implementation of this special action plan and their effectiveness.
This campaign is part of the government’s effort to crack down bad faith trademark filings. We expect to see more development as this campaign goes. Although according to the action plan, CNIPA will take its own initiative in finding clues of bad faith filing sand investigate into some pilot cases, we consider it does no harm for brand owners who are plagued by severe badfaith filings to present clues actively to CNIPA’s attention. Since most brand owners’ cases before CNIPA are either pending before different examiners or at different stages, we suggest consolidating and combining the information and presenting to CNIPA into one document for it to quickly get the full picture. Hopefully, this effort may help resolve at least partial trademark issues that brand owners are facing in China.