China strives to crack down on malicious hoarding of trademarks

In recent years, China has seen sustainable growth in trademark registration applications. However, a small number of applicants were found to register trademarks beyond the normal business needs, hoarding a number of trademarks not for the purpose of use, which hinders market entities with normal business needs from applying for registered trademarks, and transfers the hoarded trademarks to the users at a high price for seeking illegitimate benefits. Cai Qiongyan, director of the Comprehensive Division of the Trademark Review and Adjudication Board (TRAB) of the China National Intellectual Property Administration (CNIPA), pointed out that malicious hoarding of trademarks is a key target of trademark administrative authorities.

"When the Trademark Office (TMO) examines trademark registrations, it will severely crack down on malicious hoarding of trademarks which clearly disrupt the order of trademark registration and undermine public interests," said Fan Yali, deputy director of Division of Trademark Examination Administration of the TMO of CNIPA. She added that the TMO would combat hoarding of trademarks in the substantive examination process by adjusting examination procedures and adding information prompting functions.

Guangzhou 4399 Information Technology Co., Ltd. applied for more than 9,000 trademarks, 210 of which were opposed by different rights holders and the TMO handled 39 trademarks in question; Shanghai Wuyue Information Technology Co., Ltd. filed more than 500 trademark applications, 77 of which were opposed by different rights holders, and the TMO dealt with the 13 trademarks in question and etc. In the above cases, the TMO rejected the registration of a bunch of trademarks filed by the person challenged according to the relevant provisions of the Trademark Law.

In recent years, the TMO and the TRAB have made continuous efforts to strengthen the intelligent analysis of data by analyzing and classifying the acts of squatting with bad faith and of hoarding trademark resources as well as acts of frequently squatting some well-known trademarks or damaging legitimate rights and interests of trademark right holders and to grasp the motive of the applicant to apply for a registered trademark as a reference to the subjective malicious judgment of the latter case, and handled a batch of maliciously hoarding trademark cases.

"We must make full use of existing legal means, resolutely curb malicious trademark squatting and effectively regulate the order of trademark registration." Tao Kaiyuan, vice president of the Supreme People's Court, also noted at this year's National Court of Intellectual Property Trial Work Conference that the People's Court should curb malicious hoarding behavior of trademark registration based on the spirit of the intent of real use of trademark registration.

According to China's existing legal legislations, examination models and standards, there are certain limitations in discovering and combating malicious hoarding in the substantive examination of trademark registration. Li Mingde, director of the Intellectual Property Center of the Chinese Academy of Social Sciences, suggested that when applying for trademark registration under the Chinese Trademark Law, the applicant should submit evidence that the relevant trademark has been used or will be used and make a series of statements. The examination of trademark registration should refer to the business scope recorded in the business license of the applicant.