29 July 2020TrademarksRory O'Neill

Webinar: tackling bad faith TMs in China

Bad faith trademark registrations have long been considered a scourge of the Chinese IP system. But significant progress has been in tackling the problem, according to trademark lawyers at  Wanhuida IP.

Speaking yesterday, July 28, at a webinar jointly hosted by WIPR and Wanhuida IP, Jason Yao and Mingming Yang explained the history of bad faith registrations in China, and what brand owners can do about it.

“A few high-profile cases have set a very bad example in China, and many people learned that if you file a trademark, you can end up being paid a very large amount in damages,” explained Yao.

One such example was that of Apple, which was forced to shell out an estimated $60 million to settle a dispute with a Chinese monitor manufacturer to settle a dispute over the ‘iPad’ trademark.

This was made possible by China’s ‘first-to-file’ system, which effectively awards trademarks on a first-come, first-served basis.

“The trademark system in China is not based on use—the use or intention to use is not required [in an application],” Yang said.

The good news is that there are more tools than ever in the hands of brand owners to ward off bad faith filings, and challenge existing registrations.

New amendments to Chinese law mean that trademark applications for a purpose other than use will be rejected, Yang explained.

These reforms have also made it easier for brand owners to pursue non-use cancellation actions.

This is a very effective tool, Yang said—these actions have a 72% success rate, with this rising to 80% for appeal actions.

“In most cases trademark owners did not respond at all,” he said. But there is a downside. This procedure can also be used by infringers in an effort to “annoy” genuine brand owners.

Then, there is the litigation option. According to Yao, this can be a useful complement to cancellation and trademark prosecution proceedings.

“It’s sometimes better to go through civil litigation to collect the evidence on bad faith and then return to trademark prosecution,” he said.

Listen to the full webinar, “How to Deal with Bad Faith Trademark Registrations in China”,  here.

For more information on opportunities to participate in a webinar, contact Sarah Gooding at

To listen to WIPR and LSIPR’s back catalogue, visit our  BrightTALK channel.

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