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In order to facilitate the public and trademark practitioners to better understand the "Guide for Trademark Examination and Trial" (hereinafter referred to as the "Guide") and respond to social concerns, the Trademark Office of the State Intellectual Property Office has sorted out questions and answers on key issues in the process of formulating the "Guide".

The second chapter of the second part of the Guide is the examination and hearing of "malicious trademark registration applications for non-use purposes". In order to adapt to the new contents of the fourth amendment of the Trademark Law, this chapter has received high attention from various parties at home and abroad during the formulation of the Guide. The relevant issues are interpreted as follows:

1. Q: What is the background of adding the examination criteria for "malicious trademark registration applications not for use"?

A: In order to implement the decisions and arrangements of the Party Central Committee and The State Council, adapt to the economic and social development situation, strengthen the protection of intellectual property rights, further optimize the business environment, solve prominent problems in the practice of trademark registration, and more effectively curb the malicious registration of trademarks, the Standing Committee of the 13th National People's Congress decided to amend the Trademark Law on April 23, 2019. In the first paragraph of Article 4, it is added that "malicious trademark registration applications not for use shall be rejected".

In order to implement the fourth amendment to the Trademark Law and regulate trademark application registration behavior, the State Administration for Market Regulation formulated and issued Several Provisions on Regulating Trademark Application Registration Behavior (Order No. 17 of the State Administration for Market Regulation) in October 2019, detailing the considerations for determining whether a trademark is a "malicious trademark registration application not for use".

In order to adapt to the revision and improvement of the Trademark Law and resolutely crack down on malicious trademark registration applications that are not for the purpose of use, the Trademark Office summarized the practical experience of examination and trial in the past two years since the promulgation and implementation of the new Trademark Law, and formulated this chapter on the basis of widely soliciting opinions from all sectors to clarify the standards for examination and trial of "malicious trademark registration applications that are not for the purpose of use".

2. Q: What was the idea behind the drafting of this chapter?

A: This chapter was drafted along the following lines:

First, in line with the latest amendments to the Trademark Law, the definition, application requirements, considerations and application of "malicious trademark registration for non-use purposes" are clarified, and typical cases are embedded to enhance guidance and rationality.

The second is to unify the trademark review, opposition, review and other review and trial practices, clarify the consideration factors for the application of each link of review and trial, and achieve the consistency of the application of standards and the organic unity of the case principle.

Third, summarize the practical experience of trademark examination and trial, reflect, consolidate, confirm and develop the latest work results of trademark registration examination and trial.

3. Q: What is the difference between "malicious trademark registration for non-use purposes" and "name-sharing" and "hot spot" and other malicious registration behaviors? How to judge "non-use purposes" and "malicious intent"?

A: There is no definition of "bad faith" in the legal provisions of China's Trademark Law, and the relevant provisions to combat the malicious registration of trademarks are scattered in articles 4, 7, 15, 19, 32, 44 and other provisions of the Trademark Law. It is generally believed that according to the infringed interests, the malicious registration of trademarks can be roughly divided into two types: one is the malicious registration of trademarks, that is, "near the famous brand", "hot spot" and the name of public figures and other trademark registration applications with damage or attachment to others' goodwill, civil rights and legitimate rights and interests as the core characteristics; The other category is "malicious trademark registration application for non-use purposes" behavior, that is, "batch application", "resource capture" and other trademark registration application behavior with the core characteristics of disrupting or impacting the order of trademark registration and management.

The two types of malicious trademark registration are both distinct and related. The Guide makes clear that the "malicious trademark registration application not for use" in the first paragraph of Article 4 of the Trademark Law refers to "the applicant is not based on the needs of production and business activities, and submits a large number of trademark registration applications, lacks the true intention of use, improperly occupies trademark resources, and disturbs the order of trademark registration." "Bad faith" in "bad faith without use" refers to the intention of applying for a trademark in large numbers without use and intending to make a profit, which is different from "bad faith" in "bad faith squatting". If the malicious registration of trademarks such as "near famous brand" and "rub hot spot" only damages the civil interests of a specific subject and does not involve damage to the public interest, it should be regulated by the relative reason clause, which does not belong to the "malicious trademark registration application for the purpose of not using" regulation. Of course, if the number of trademarks registered in bad faith is large, improperly occupied trademark resources, and disrupted the order of trademark registration, it should be regulated by Article 4, paragraph 1, of the Trademark Law.

The act of applying for trademark registration "not for the purpose of use" means that the applicant has neither the purpose of actually using the trademark nor the behavior of preparing to use the trademark when applying for the registration of the trademark, or according to reasonable inference, there is no possibility of actually using the trademark. The legislative purpose of Article 4 of the Trademark Law is to curb the improper occupation of trademark resources and disrupt the order of trademark registration, trademark hoarding and other malicious applications, which do not apply for a large number of trademarks for the purpose of use and intend to make profits, which belongs to the non-use for the purpose of "bad faith" regulated by this article.

4. Q: Do I need to submit evidence of use to submit an application for trademark registration? How to understand the two exceptions listed in this chapter that do not apply Article 4 of the Trademark Law?

A: According to the relevant provisions of the Trademark Law, China's trademark exclusive right to adopt the principle of registration, not use as the premise. Filing a trademark registration application generally does not require the submission of evidence of the use of the trademark or an explanation of the intent to use it.

The legislative intention of the first paragraph of Article 4 of the Trademark Law is to regulate the malicious application, hoarding registration and other acts of "not for the purpose of use" and enhance the use obligation of registration applicants. The Guide clearly states that "the applicant applies for a trademark with the same or similar logo of its registered trademark for defensive purposes" and "the applicant has a realistic expectation of future business and applies for a trademark in advance in an appropriate amount" are not applicable to Article 4 of the Trademark Law. The so-called "application for a trademark identical or similar to its registered trademark logo for defensive purposes" mainly means that the trademark registrant applies for the registration of a trademark identical or similar to its core brand on goods or services other than its main business, in order to prevent others from annexing or defiling the goodwill already formed on its main business or core brand. The so-called "appropriate amount of trademark application in advance for the future business with realistic expectations" mainly takes into account that in actual commercial activities, there is a certain time difference between the commercial planning of relevant goods or services and the actual publicity, promotion and putting into the market. Some market entities have the need to arrange trademark registration in advance, prevent possible trademark squatting or avoid infringement of prior rights and interests. Therefore, applicants are allowed to apply for appropriate trademarks.

In particular, it should be emphasized here that although the Guide gives a certain degree of recognition to the above two acts, this recognition is limited, and the application for trademarks must be appropriate in either case. Excessive defense and excessive reserve behavior of applying for a large number of trademarks with no real intention to use beyond the reasonable and necessary limits, although not for the purpose of transfer for profit, but also occupy a lot of trademark and administrative resources, and also belong to the behavior of disrupting the order of trademark registration, can still be identified as "malicious trademark registration not for the purpose of use".

5. Q: What are the circumstances of "malicious trademark registration without use"? Why does the provision apply primarily to opposition and review procedures?

A: The Guide identifies ten situations that fall under the category of "malicious trademark registration for purposes other than use", including:

(1) The number of trademark registration applications is huge, obviously exceeds the needs of normal business activities, lacks real intention to use, and disturbs the order of trademark registration;

(2) A large number of copies, imitation, copying of multiple subjects with a certain degree of visibility or strong significance of the trademark, disrupting the order of trademark registration;

(3) Repeatedly applying for the registration of a specific trademark with certain popularity or strong significance of the same subject, disrupting the order of trademark registration;

(4) Applying for the registration of a large number of business names, short names of enterprises, e-commerce names, domain names, commodity names, packaging, decoration that have a certain influence, well-known and recognizable advertising slogans, designs and other commercial logos identical or similar;

(5) A large number of applications for registration are identical with or similar to public cultural resources such as the name of a well-known figure, the name of a well-known work or role, or a well-known and identifiable art work of others;

(6) A large number of applications for registration are the same or similar to the name of the administrative division, the name of the mountain, the name of the scenic spot, the name of the building, etc.;

(7) A large number of applications for registration of designated goods or services on the generic name, industry terminology, directly indicating the quality of goods or services, main raw materials, functions, uses, weight, quantity, etc., lack of significant marks;

(8) A large number of applications for trademark registration are submitted, and a large number of trademarks are transferred, and the assignees are scattered, disrupting the order of trademark registration;

(9) The applicant has, for the purpose of obtaining improper benefits, sold in large quantities, forced business cooperation from the prior user of the trademark or others, and demanded high transfer fees, licensing fees, or compensation for infringement;

(10) Other circumstances that can be identified as malicious application for trademark registration.

The "huge amount" and "large amount" referred to in the above circumstances need to be combined with the applicant's situation, the situation of the applied trademark and other factors to make a comprehensive judgment.

Case (3) If the repeated application for registration belongs to the bad faith registration situation regulated by other provisions of the Trademark Law, other provisions shall apply. If other provisions of the Trademark Law are violated at the same time, the other provisions shall be applied together.

The Guide provides that the two categories (3) and (9) mainly apply to trademark opposition and review procedures, and their main considerations are: On the one hand, (3) and (9) two situations generally need to be combined with the actual evidence to judge, but trademark registration examination is usually based on the trademark registration application documents, the initiative and unilateral behavior, there is no evidence, cross-examination links, opposition and review procedures can give the requested party sufficient opportunity to defend, and protect the procedural interests of the relevant parties; On the other hand, "mainly applicable to opposition and review procedures" does not completely rule out the application of the above two situations in the review stage, and the trademark registration review process can be comprehensively considered according to the case clues found in the review.

Related links：Announcement of the State Intellectual Property Office on Issuing the Guidelines for Trademark Examination and Adjudication (No. 462)

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