Marques 2019: China’s fight against ‘malicious’ registrations
Events such as the Marques annual conference are an important opportunity for Chinese brands to build links to the European market, as well as for international attendees to gain a “deeper understanding” of the Chinese legal system.
This was the message from the China Trademark Association at its workshop held yesterday, September 20 on the penultimate day of Marques 2019.
The CTA is a government agency established in 1994 for the purpose of “serving trademark strategy and promoting national brands”.
“A more open China brings more opportunity,” said Wu Dongping, CTA deputy secretary general.
The organisation’s participation in Marques, he said, was partly motivated by a desire to learn more about the European market and its IP laws.
At the workshop, the CTA invited attendees from around the world to learn more about China and the efforts it has been making with respect to IP protection in recent years.
The main focus of recent revisions to Chinese IP law has been tackling the problem of bad faith trademark filings.
As moderator Julia Hongbo Zhong, vice president of Lee and Li, said, there has been a “surge in trademark filings” in China in recent years, which includes a “huge amount of malicious trademark registrations”.
Yanfang Wang, presiding judge of the IPR division of the Supreme People’s Court (SPC), China’s highest judicial authority, cited recent cases involving brands such as Uniqlo, which she said highlighted the country’s commitment to dealing with the problem.
According to the judge, the message which emerged from the SPC’s recent efforts at stamping out bad faith registrations was : “Do not try to make use of Chinese courts for unlawful purposes.”
According to Zhang Xiaoli, judge at the Beijing IP Court, updated legislation passed this year was concerned mostly with eliminating “malicious registrations”.
Revisions to the Trademark Law were passed in April this year, and will take effect on November 1.
The amended law says explicitly that “applications for trademark registrations in bad faith which are not intended for use shall be refused”.
Legislative changes have also been accompanied by improvements in case law, but problems still remain, according to Paul Ranjard, counsel at Wanhuida Peksung IP Group.
The recent explosion in trademark filings in China was “not healthy” and left “no more space” on the register, Ranjard said.
It is no surprise then that pruning bad faith registrations has become an important priority for authorities.
Yet legislators and courts must still do more, he said.
He cited article 7 of the Trademark Law which requires parties to act in good faith in trademark matters.
Yet, Ranjard said, article 7 only outlines a “general principle” - in reality, he said, it is “impossible” to take action against bad faith registrations on the basis of article 7 alone.
Despite the obstacles that remain, speakers agreed that China was moving in the right direction.
Betty Wang, deputy director of IP at e-commerce company Tencent, speaking on her own behalf, predicted a fall in bad faith registrations after the new laws came into effect on November 1.
Bad faith filings have been a particular thorn in the side of Tencent, Wang said.
While her company has successfully defended its IP against bad faith actors, having to do so was a “waste of time and a burden”, Wang said.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories:
Marques 2019: clarity needed on non-traditional marks
Australian court rejects Encompass computer-implemented appeal
EU report: Increase in small parcels but decrease in number of fake goods
