Top 10 Typical Bad Faith Trademark Registration Cases From Beijing Intellectual Property Court – Trademark

On December 14, 2023, the Beijing Intellectual Property Court released its top 10 cases governing bad faith trademark registrations. Among them, administrative cases include the use of absolute reasons and relative reasons
OZand regulatory targets include trademark registrants and trademark agencies. These cases further clarify the dimensions of review and the standards for identifying bad faith trademark registrations. Civil litigation involves both abuse of rights by trademark owners and cases where punitive damages are legally sought against willful, bad faith infringers and those with serious consequences for infringement.

Box 1 – File multiple trademark applications in a short period of time without proving the actual intent of use or citing other genuine reasons, which constitutes “registration in bad faith without intent to use” as referred to in Article 4(1)
OZ.

Summary of Decision:

In order to review and determine whether an applied for trademark falls under the circumstances, the courts must consider the number of registered trademarks applied for by the applicant, including the individual, legal entity or other organization related to it, the class intended for use, and the trademark. transaction. Factors such as the applicant’s industry, business conditions, and whether the trademark filed for registration is the same or similar to someone else’s well-known trademark. If a large number of trademarks in multiple classes of goods or services are registered in a short period of time, which clearly exceeds normal production and operational needs, and the applicant cannot demonstrate a genuine intention to use or other legitimate reasons, it should be considered as a registration in good faith without a purpose of use .

Box 2 – If the current or former legal representative, senior managers and other employees of the trademark applicant worked for others and knew that others had previously used the trademark, but preemptively registered a similar trademark for similar goods, this is considered a violation of paragraph 2 of Art. 15 of the Act OZ.

Summary of Decision:

“Other relationships” referred to in paragraph 2 of Article 15 of the Act OZ refers to situations where there are specific relationships other than those listed in Article 15(1) and the existence of third party unregistered trademarks may be known and should be actively avoided. The applicant and the previous user are related by family, employment, proximity of business address, etc. Current or former counsel, executives, and other employees of the trademark applicant have worked for others, which constitutes the “other relationships” referred to in this paragraph. Anyone who knows that others have previously used a trademark through the above-mentioned relationship, but has registered a similar trademark for similar goods as a precaution, violates paragraph 2 of Article 15 of the Commercial Code. OZ.

Field 3 – If the trademark applicant files a trademark containing a geographical indication, but cannot demonstrate that the marked goods come from the scope of protection of the protected products from that geographical indication, it should be determined that the use of the disputed trademark is likely to mislead. audience.

Summary of Decision:

The protection of geographical indications is intended to prevent goods that do not originate from geographical indications from misleading the public by using those trademarks. Thus, ensuring the specific quality, reputation or other characteristics of goods using trademarks containing geographical indications is primarily determined by the natural or human factors of the geographical indication. If there is no evidence to show that the goods come from the protected goods of the geographical indication, and the trademark application contains such geographical indications, it should be determined that the use of the trademark is likely to mislead the public. .

Field 4 – Titles of TV columns and programs with a certain influence constitute priority rights set forth in Article 32 of the Trademark Act. If the trademark applicant has used the same or similar trademark for the same or similar goods, the regulations under Article 32 apply to him.

Summary of Decision:

TV columns and programs have the attributes of goods, and the names of TV columns and programs that have a certain influence are “merchandise names that have a certain influence” as defined in Article 6 Law against unfair competitionand constitute “preferential rights” as defined in Article 32 of the Treaty OZ. Thus, if a trademark applicant has squatted a trademark with an identical or similar name on someone else’s television column or program that has some influence over identical or similar goods, the relevant public can easily be confused into mistakenly believing that the trademark applicant has a specific connection with the owner of the priority right, which represents “damage to the priority rights of others” specified in Article 32 of the Commercial OZ.

Field 5 – If the trademark applicant applies for the registration of a large number of trademarks based on the conditions of a public event and the names of public cultural resources for the purpose of unauthorized use of public resources, this is “obtaining registration by other unfair means” within the meaning of paragraph 1 of Article 44 OZ.

Summary of Decision:

“Obtaining registration by other inappropriate means” as referred to in paragraph 1 of Article 44 of the Act OZ refers to violation of trademark registration, damage to public interests, improper use of public resources or seeking improper advantages by means other than fraud. A trademark applicant who applies for the registration of a large number of trademarks for the dates of public events and the names of public cultural resources has a subjective intention to occupy public resources without authorization and should be considered as “obtaining registration by other inappropriate means” as stated in paragraph 1 of Art. 44 of OZ.

Field 6 – a stamp agency applies for a trademark on behalf of its former executive in order to avoid the regulation, such a filing can be considered as a filing by a stamp agency under § 19(4)
OZ.

Summary of Decision:

Paragraph 4 of Article 19 of the Act OZclarifies the circumstances under which trademark agencies are prohibited from registering trademarks. The legislative intent is to protect the public interest and to prevent trademark agencies from using the advantages or benefits of being familiar with the trademark registration process to obtain profit for the trademarks of others, which distorts the order of trademark registration. The act of a trademark agency that applies for the registration of a trademark on behalf of its former executive can be considered an act of a trademark agency and is subject to § 19 paragraph 4 OZ.

Field 7 – In the case of plaintiff’s cross-class malicious squatting on a well-known trademark of others on the Internet, factors such as the plaintiff’s subjective bad faith on the Internet and whether the relevant public for the goods or services overlap substantially to determine the scope of cross-class protection of well-known brands.

Summary of Decision:

When determining whether a trademark on the Internet constitutes a well-known brand, the characteristics and speed of information dissemination on the Internet, the determination of the influence of the brand and the area of ​​influence, etc., should be fully considered. Various factors need to be comprehensively considered to identify a well-known brand. For actors who have squatted someone else’s well-known mark on the Internet in other classes, factors such as the squatter’s degree of subjective bad faith and whether the relevant public for the goods or services overlap greatly should be fully considered in order to reasonably determine the scope of cross-examination. protection class for well-known brands. This will result in the intensity of regulation of the scope of protection of well-known marks.

Box 8 – The plaintiff knew that the registered trademark had serious legal defects, but still used it as the main purpose to obtain unfair business interests and damage the legitimate rights and interests of others, sent requests by letters to others and filed administrative complaints. Such conduct seriously breached the principle of good faith and constituted an abuse of trademark rights.

Summary of Decision:

The trademark registrar knew that the registered trademark had serious rights defects, but still sent applications to others, filed administrative complaints, etc., with the main purpose of seizing unfair business interests and harming the legitimate rights and interests of others. Such conduct seriously violates the principle of good faith and constitutes an abuse of trademark rights. The applicant for trademark registration shall be legally responsible for compensating the necessary expenses incurred by the alleged infringer to protect his legitimate rights and interests and to respond to the abuse of trademark rights by the applicant for trademark registration.

Box 9 – A party who violates the principle of good faith by filing a trademark infringement action against the fair use of trademark rights based on trademarks acquired in good faith constitutes abuse of rights.

Summary of Decision:

The granting and exercise of trademark rights is governed by the principle of good faith. If one of the parties violates the principle of good faith and files a lawsuit for violation of fair use of trademark rights based on a trademark obtained in bad faith, it will not only harm the legitimate rights and interests of others, but also violate the order of fair competition. in the market which constitutes an abuse of right and her claims should be dismissed in accordance with law.

Box 10 – If the infringer has carried out an “all-round” imitation of the well-known brand of the right holder in all respects, including trademarks, product packaging, slogans, sales methods, etc., and there has been a mixing of genuine and counterfeit goods, the infringer has abused the goodwill of the right holder in an obvious wrong belief and the consequences of such a breach are serious and punitive damages should be awarded.

Summary of Decision:

Unlike infringement that only targets one trademark, “all-round” brand imitation has a greater impact on brand image and rights. Specific patterns may include the registration and use of trademarks that are similar to the rights holder’s trademark, imitation of packaging and decorations, mixing and matching of genuine and counterfeit products for the purpose of sale, use of misleading slogans, etc. For such serious infringements, “all-out” imitation of previously known marks punitive damages should apply.

The content of this article is intended to provide a general guide to the issue. Professional advice should be sought regarding your particular situation.

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