Legislation & Policy

Translation: Notice on the Action Plan for Combating Bad Faith Trademark Registration

SIPS Knowledge, Legislation and Policy

CNIPA

March 15, 2021

Intellectual Property Offices of all provinces, autonomous regions, municipalities directly under the Central Government and Xinjiang Production and Construction Corps; relevant departments of the bureau and trademark office:

In order to thoroughly implement the spirit of General Secretary Xi Jinping’s important speech during the 25th collective study session of the Political Bureau of the Central Committee, effectively implement the deployment of the National Intellectual Property Office Directors’ Meeting, and further strengthen the crackdown on malicious trademark cybersquatting, it is decided to start from March 2021. Starting from this month, a special campaign has been launched to combat malicious squatting of trademarks. The “Special Action Plan for Combating Malicious Trademark Squatting” is hereby issued to you, please organize and implement it carefully.

State Intellectual Property Office

Contact person and phone number: Dai Shuyuan/Zhang Xu 63219639/63219707)

Special Action Plan to Combat Malicious Squatting of Trademarks

In order to thoroughly implement the spirit of General Secretary Xi Jinping’s important speech during the 25th collective study session of the Political Bureau of the Central Committee, earnestly implement the deployment of the National Intellectual Property Office Directors’ Meeting, and further increase the crackdown on malicious trademark cybersquatting, according to the “People’s Republic of China” The “Trademark Law”, “Regulations for the Implementation of the Trademark Law of the People’s Republic of China” and “Provisions on Regulating Trademark Registration Acts” have decided to focus on launching special actions to combat malicious cybersquatting of trademarks starting from March 2021. The special action plan is now formulated as follows:

1. Overall Goal

Highlight the high-quality creation orientation of intellectual property rights, actively respond to the new trend of malicious squatting of trademarks, respond to social concerns, and effectively increase awareness of political, political investigation, and political governance, and severely crack down on serious violations of the principle of good faith and public order and good customs, disruption in the order of trademark registration management and the typical malicious squatting behavior of trademarks that is likely to cause serious adverse social impacts, pay attention to the law, compliance, rationale and law, focus on departmental coordination, coordinated advancement, pay attention to sound mechanisms, source governance, and guide the whole society to further establish correct awareness of trademark registration, promote the stable number and quality of trademark applications, promote high-quality development of intellectual property rights, and help create a good environment for innovation and business.

2. Focus of Work
  1. This special action is focused on cracking down on the following acts of malicious squatting of trademarks, seeking improper benefits, disrupting the order in trademark registration management, and causing greater adverse social impact:
  2. Malicious squatting of names of national or regional strategies, major events, major policies, major projects, or major scientific and technological projects;
  3. Maliciously rush to pay attention to vocabulary and signs related to public emergencies such as natural disasters, major accidents, major public health incidents, and social security incidents, harming the public interests of the society;
  4. Malicious preemptive registration of the names and logos of major competitions or major exhibitions with a relatively high reputation;
  5. Malicious preemptive registration of public resources ,such as names of administrative divisions, mountains and rivers, scenic spots, and buildings;
  6. Malicious preemptive registration of common names, industry terms and other public commercial resources of goods or services;
  7. Maliciously registering the names of public figures, well-known works or characters with high reputation;
  8. Malicious preemptive registration of another’s trademark or other commercial mark with a relatively high reputation or strong distinctiveness, which damages the prior rights and interests of others;
  9. Obviously violating the prohibition of Article 10 of the Trademark Law and other violations of public order and good customs, causing significant negative or negative social impact on my country’s political, economic, cultural, religious, ethnic and other social public interests and public order;
  10. Trademark agencies that knows or should know that a client is engaged in the above-mentioned acts, but still accepts their entrustments or disturbs trademark agency order by other improper means;
  11. Other obvious violations of the principle of good faith.

For the handling of applications for registration of malicious hoarding of trademarks that are not intended for use, a separate document regarding rectification has been issued.

3. Mission Measures
  1. Strengthen clues. Strengthen the investigation of the clues into case. All regions shall fully consider the actual situation of the implementation of major national policies that local participate in, the major national projects undertaken, the existence of major public emergencies, and the major exchange events and exhibitions held, determine the focus of work, and establish a work account. Clues and materials concerning malicious cybersquatting cases reported in the region should be fully detailed, and the clues and materials of the cases suspected of malicious cybersquatting in the region should be comprehensive and complete.
  2. Strengthen precision strikes.  Implement precision strikes around the entire process of trademark registration. Strengthen the monitoring of malicious squatting, realize the coordination of trademark registration, opposition, review and follow-up business, and promote consistent implementation of standards. For clues regarding the trademark registration process, the Trademark Office will instruct the local trademark review and cooperation centers to handle them in accordance with the law. If a malicious act of preemptive trademark registration exists, a rapid rejection mechanism will be activated. If clues to cases in the trademark opposition or invalidation procedures constitute malicious preemptive trademark registration, measures such as early review and trial, consolidated review and trial, and oral hearing of major cases shall be adopted, and registration shall not be granted or be declared invalid in accordance with the law. The crackdown on trademark squatting that is not for the purpose of use shall be strengthened. For malicious squatting and the transfer of trademarks for profit, approval will not be granted according to law. Full use will be made of information technology to promote the sharing of information in the review process.
  3. Strengthen departmental linkage.  Enhance system protection capabilities, strengthen the organic connection between trademark registration, administrative law enforcement and judicial protection, and promote the organic integration of review authorization standards, administrative law enforcement standards, and judicial judgment standards. The comprehensive use of regulatory measures within the trademark registration process and administrative penalties outside the trademark registration process has formed a combined force for a comprehensive and severe crackdown on malicious squatting of trademarks, and intensified efforts to combat malicious squatting of trademarks. The law will be strictly applied, fully reflecting the intent of the law, comprehensively considering subjective and objective factors, and the preventing and curbing of malicious squatting of trademarks within the discretionary space provided by the law.
  4. Strengthen comprehensive measures. Comprehensively use legal punishments, administrative guidance and credit restrictions, etc., and focus attention to regulation, education and guidance, improve the effective containment mechanism and the long-term mechanism of prevention from the source, and continuously improve the effectiveness of trademark review and trials, intensively weaving and regulating malicious cybersquatting legal networks, and promoting the inclusion of administrative punishment information on malicious cybersquatting activities into the national public credit information catalogue in accordance with laws and regulations, and credit files. In the in-depth implementation of the “blue sky” special rectification action, intensify the crackdown on trademark agencies engaging in malicious trademark registration. If the circumstances are serious, all regions should report to stop accepting their trademark agency services in accordance with the law. Standardize platform-based intellectual property service organizations, and promptly interview and rectify irregular operations. Resolutely put an end to the number of trademark applications as the main basis for departmental work evaluation, and avoid comparing the number of trademark applications with each other, and avoid supporting trademark registration (including the Madrid international registration of trademarks) in any form such as funding or awards. Strengthen supervision and inspection, and cancel all kinds of support policies and project application qualifications as appropriate for places with prevarication, delays and ineffective actions.
  5. Strengthen publicity and education. Propaganda and launching work will be carried out throughout the special operation to effectively form a high-impact deterrent. Pay attention to timely publicizing the progress and results achieved in combating malicious squatting of trademarks. Extensively carry out various forms of publicity and education, expose typical cases, publish typical cases of malicious trademark squatting and illegal individuals, enterprises and agencies, clarify the intent of the legislation, respond to social concerns, deter violators, and provide fair competition and development for various market entities. Innovate and consciously resist malicious squatting of trademarks to create a good legal environment, market environment and social environment for intellectual property rights. Do a good job of public opinion guidance and control, grasp the caliber and rhythm of propaganda, and strictly prevent bad speculation.
4. Division of Responsibilities

The office is responsible for organizing the promotion of special actions and the release of typical cases; monitoring, researching and judging and responding to the public opinion related to the special actions.

The Law Department is responsible for researching and guiding the application of law in major, difficult and complex cases under the framework of the joint work mechanism for severely cracking down on malicious applications.

The Protection Department is responsible for guiding regional intellectual property management departments to investigate the applicant’s illegal behavior in accordance with the effective administrative decisions, rulings and related judicial judgments, as well as case materials assigned by the bureau, and handling administrative penalties in conjunction with relevant departments; credit supervision of market entities.  In case of special circumstances such as major public emergencies or emergencies of general public concern, promptly notify the Trademark Office to provide relevant trademark information and promote the implementation of local work to be included in the inspection and assessment of intellectual property protection.

The Utilization Promotion Department shall be responsible for organizing and guiding various regions to investigate and deal with the case clues of trademark agencies participating in malicious squatting of trademarks in accordance with the law and their duties; strengthen the credit supervision of trademark agencies; strengthen the supervision of trademark transactions and trademark agency network platforms in accordance with laws and regulations; Issue public events or special circumstances such as emergencies of general public concern, promptly notify the Trademark Office to provide relevant trademark information; guide various regions to optimize and adjust intellectual property funding policies.

The Department of Public Service is responsible for promoting the exchange and sharing of information about perpetrators of malicious squatting of trademarks.

Relevant disciplinary inspection and supervision agencies are responsible for supervising and disciplinary over the performance of their duties, upholding public powers, etc., in special operations according to their duties and powers, and promoting the standardized and transparent operation of supervisory powers.

The Trademark Office is responsible for organizing and coordinating the development of special actions; establishing a working mechanism for joint identification of malicious squatting of trademarks, organizing joint identification of clues to major and difficult cases of special actions; dismissing malicious squatting in the trademark registration process according to law, etc. The function proactively declares a batch of badly influential trademarks invalid, and publicizes relevant review decisions and trial rulings; leads to cases that need to be regulated and investigated in the trademark review trial that are found to be significant and obvious suspected malicious squatting, and forward them to the Protection Department and the Application Promotion Department in accordance with their duties and inspecting the development of special actions by local trademark examination and collaboration centers.

All regional intellectual property management departments are responsible for finding clues into cases of malicious cybersquatting and suspected malicious cybersquatting within their jurisdiction; organizing investigations and punishments of market entities and trademark agencies that engage in malicious cybersquatting within their jurisdiction; taking responsibility for territorial supervision of trademark transaction service institutions and platforms; taking responsible for comprehensively sorting out the indicator setting and funding policies related to trademarks in the jurisdiction; finding deficiencies and outstanding problems; proposing rectification measures; formulating work plans and making optimization adjustments, and reporting the relevant situation to the State Intellectual Property Office in a timely manner.

The local trademark examination and cooperation centers are responsible for collecting clues of the trademarks suspected of malicious preemptive registration of the above-mentioned typical trademarks in the trademarks pending examination of the center, and submitting them together, under the guidance of the Trademark Office for examination in accordance with laws and regulations.

5. Schedule

Implementation shall take place in three stages:

  1. Mobilization and deployment phase (March). Issue a special action plan for mobilization and deployment, and at the same time carry out public opinion propaganda work to create a good public opinion atmosphere. Intellectual property management departments at all levels and local trademark review and collaboration centers should promptly communicate special action plans, formulate special work plans based on actual conditions, clarify key goals and key links, clarify specific responsible persons and work contacts, set up special classes, and actively carry out Find clues to the case. All regional intellectual property management departments collect clues from cases within their jurisdictions, which will be summarized by the provincial (regional, municipal) Intellectual Property Office; each local trademark review cooperation center collects clues from the center’s pending trademarks, and the above clues shall be reported before March 30 Trademark Office. The Trademark Office sorted out the clues submitted and transferred them according to the division of responsibilities.
  2. Organization and implementation stage (April-October). The Trademark Office shall instruct all local trademark examination and cooperation centers to examine clues into cases relating to the trademark registration process in accordance with the law. As for clues of regarding trademark opposition and invalidation cases, the Trademark Office shall review and review a batch of typical trademarks for invalidation. For clues to major and obvious cases involving malicious trademark cybersquatting, as well as relevant trademark information related to major public emergencies or emergencies of general public concern, the Protection Department shall forward them to the relevant regional intellectual property management departments for handling. The administrative decision, ruling, or judicial decision of the trademark agency that has been effective for the case clues to the above-mentioned typical malicious preemptive registration of trademarks shall be forwarded by the Utilization Promotion Department to the local intellectual property law enforcement agencies and guided to investigate and deal with them in accordance with the law. The administrative departments of intellectual property rights at all levels and regions should focus on carrying out special rectifications based on the clues of cases transferred by superiors. Administrative penalties shall be imposed in accordance with the law for illegally engaging in malicious preemptive registration of trademarks. The investigation and handling of cases and policy self-inspection and adjustments were reported back to the higher authorities in a timely manner.
  3. Summarize the inspection stage (November-December). The Trademark Office will conduct inspections of the development of special actions by the local trademark examination and collaboration centers. Provincial (regional, municipal) intellectual property offices supervise the development of special actions within their jurisdictions, follow up and supervise the clues and investigations of transferred and assigned cases; summarize the development of special actions in their respective jurisdictions, and each local trademark review cooperation center will prepare a summary of the special actions carried out by the center will be reported to the Trademark Office before December 10. The State Intellectual Property Office evaluates the development of special actions and their effects and reports them.

This special action is an important measure to implement the spirit of General Secretary Jin Ping’s important speech during the 25th collective study of the Political Bureau of the Central Committee. All regions and departments must be based on their functions, attach great importance to them, and organize them carefully, organically combine special actions with daily authorization and confirmation, trademark supervision, and double random inspections, improve political positions, rapid deployment and implementation, orderly development, and pragmatic results.

Original version in Chinese available at: https://www.cnipa.gov.cn/art/2021/3/24/art_570_157956.html?xxgkhide=1