l Relevant Regulation
Article 4 of the Trademark Law stipulates that “Any natural person, legal person, or other organization needing to acquire the right to exclusively use a trademark on the goods or services thereof in the course of business operations shall apply to the Trademark Office for trademark registration. A bad faith application for trademark registration for a purpose other than use shall be rejected.” Thereinto, “a bad faith application for trademark registration for a purpose other than use” refers to applicants submit a large number of trademark registration applications not based on the needs of production or business activities, lacking real intention of use, improperly occupying trademark resources, and disrupting the order of trademark registration.
To determine whether a trademark registration application is made in bad faith without the purpose of use, the clues discovered are given priority in the registration examination, and the evidence on file shall be the main factor in the opposition and review process. The following factors may be comprehensively considered: the basic situation of the applicant; the overall situation of the trademark registration application submitted by the applicant; the specific composition of the trademark; the applicant’s behavior during the trademark registration application and after successful trademark registration; the situation of relevant evidence in the opposition and review process and other considerations.
l Practical Application
1. Application in Opposition
Case A: WEIPR represented a catering company in filing an opposition to an initially-approved trademark which was applied by a natural person. The Trademark Office reviewed and believed that as a natural person, the applicant had applied for registration of more than a thousand trademarks, which obviously exceeded the normal demand for trademark use. In addition to the opposed trademark, the respondent also applied for a large number of trademarks that were identical or similar to those previously used by others in multiple categories of goods and services, some of which had been objected to by relevant right holders. Based on this, the Trademark Office decided to reject the application of the opposed trademark.
2. Application in Invalidation
Case B: WEIPR represented a company to file a request for invalidation of a trademark owned by an investment management company. One of the main reasons was that the respondent applied for registration of the disputed trademark to hoard trademarks in bad faith. Based on this, the Trademark Office reviewed and believed that in addition to the disputed trademark, the respondent also applied for registration of more than 160 trademarks in multiple categories of goods and services, which were similar to trademarks with high popularity owned by others. The respondent’s behavior disrupted the normal management of trademark registration and the market order, and the disputed trademark was declared invalid.
3. Providing Clues of Registration in Bad Faith During Registration Examination
Case C: WEIPR represented a well-known company in the automotive industry and provided clues of malicious registration to the Trademark Office regarding the application for registration of multiple trademarks by a technology company. Upon inquiry, the applicant and the respondent are in the same region, and the respondent’s business scope includes “auto parts and accessories manufacturing; auto parts wholesale” and other products that are in the same industry chain. In this case, the respondent has repeatedly imitated the applicant’s highly well-known trademark in bad faith, and repeatedly applied trademark registration for the pattern after the Trademark Office has determined that the trademark pattern is similar to the applicant’s prior trademark. At present, all the applied trademarks are invalidated.
l Conclusion
The legislative intent of Article 4 of the Trademark Law is to regulate behaviors including bad faith application for trademark registration for a purpose other than use and hoarding registrations, and to strengthen the use obligations of registered trademarks. From the perspective of trademark agents, it is necessary to pay more attention to “bad faith application for trademark registration for a purpose other than use” during trademark monitoring, inquiries and related case handling to further protect the rights and interests of clients.
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