China Trademark Law: Invalidations Against Five-Year-Old Trademark Registrations

The China Trademark Law sets severe standards to raise the threshold for commencing an invalidation against a registered trademark in order to balance the legal rights and interests of rights owners with the protection of Chinese consumers (given through administrative authorities’ acts).

In order to bolster China’s intellectual property (IP) rights protection procedures, administrative and judicial authorities have granted stronger protection to certain forms of IP rights in specific instances. In terms of trademark protection, both the China National Intellectual Property Administration (CNIPA) and Chinese courts have made significant judgements in favor of well-known brands. The China Trademark Law sets severe standards to raise the threshold for commencing an invalidation against a registered trademark in order to balance the legal rights and interests of rights owners with the protection of Chinese consumers (given through administrative authorities’ acts).

Invalidations of Trademark Registrations older than five years

The owner of a well-known trademark is not subject to the five-year limit on claims for revocation due to a bad faith registration, according to Article 45 of the China Trademark Law. To put it another way, if a trademark has been registered for more than five years, two conditions must be met in order to successfully attack it: first, the prior trademark sought to be protected must have been well-known prior to the filing date of the disputed trademark; and second, the registrant of the attacked trademark must have acted in bad faith. In practice, the bad faith factor should be examined independently when deciding whether to accept invalidation motions for trademarks that have been registered for more than five years.

When deciding “bad faith registration over a well-known trademark,” Article 25 of the “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Concerning Trademark Right Authorization and Confirmation,” the reputation of the cited trademark, reasons for registering the disputed trademark, and usage of the disputed trademark should all be carefully examined to determine the registrant’s subjective intent. The courts can infer a “bad faith registration” in the terms of Article 45.1 of the Trademark Law where the mentioned trademark is well-known and there is no acceptable purpose for registering the contested trademark.

The Beijing High People’s Court issued “Guidelines for the Trial of Trademark Right Granting and Verification Cases” in April 2019, which include elements for establishing if a trademark was registered in bad faith. The following are some of the factors:

• The contested trademark and the prior well-known trademark have a high degree of similarity;
• The previous well-known trademark has a strong distinctiveness and a good reputation.
• There were transactions or commercial engagements between the owners of the contested trademark and the well-known trademark.
• The two sides’ business locations are close together.
• Since registration of the disputed trademark, acts that take advantage of the reputation of the well-known trademark have been conducted; and
• The owner of the disputed trademark filed several others’ strong trademarks.

Although there are still disagreements regarding how to determine bad faith in practice, the guidelines have been widely understood as reducing the number of bad faith registrations over the five-year limit. Meanwhile, the CNIPA and Chinese courts are increasingly disposed to achieve substantive justice in individual instances by giving protection to alleged well-known trademarks, according to improved trademark rules and practices.

The right holder must thoroughly prepare and organize evidence to show that its prior trademark had become well-known in the Chinese market on the specified goods or services prior to the filing date of the concerned registration, to invalidate a trademark registration obtained more than five years ago. Although the mark’s prior owners bear the burden of proof on bad faith, they must show it by a preponderance of the evidence.

Even after registration of the disputed trademark, evidence of use submitted by the owner of the contested trademark or collected by the prior mark proprietor may become useful in attesting the alleged bad faith if it shows infringing use or unfair competition acts take advantage of the well-known trademark’s reputation, and, sometimes, vital.

***Other Articles***

– You could see How To Register Trademark in China here.

– You could visit here to see Procedure of Trademark in China.

– You could visit here to check Required documents of filing trademark in China.

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