On March 24, 2021, the Chinese National Intellectual Property Administration (“CNIPA”) published an Action Plan for Combatting Bad Faith Trademark Registration (“Action Plan”). See SIPS translation of the Action Plan here.
The Action Plan is effectively a nine-month campaign that aims to identify and penalize bad faith filers and trademark agencies with the aim of creating deterrence against a range of behaviors and bringing the problem to heel.
The campaign appears intended in part to more effectively implement provisions in the PRC Trademark Law and related implementing regulations issued in late-2019. (See here for SIPS overview of these provisions and other recent efforts by CNIPA in this area.)
The new campaign covers a wide range of behaviors, including the following:
- “Bad faith registration of third party trademarks or other commercial markings that have a relatively high reputation or have strong distinctiveness, damaging the prior rights and interests of others.”
- “Bad faith registration of the names of public figures, well-known works or character names with a high reputation.”(NB: This seems to refer to movies / TV series and the names of characters appearing in such works).
While many bad faith filers are warehousers that tend to file for huge numbers of trademarks for the purpose of resale, the CNIPA announcement indicates that this phenomenon will be the subject of a separate initiative that has not yet been disclosed.
To achieve its aims, CNIPA is planning “precision strikes” around the entire process of trademark registration. While not explicitly stated, we suspect this will mean the creation of an internal black-list.
The action plan sets out a number of new, as well as existing, measures that will be deployed against bad faith marks. These include:
- Adoption of a “rapid rejection mechanism” where bad faith applications have been identified (i.e., fast-tracking decisions against bad faith filings, oppositions or invalidations);
- Consolidation of related cases;
- Imposition “social credit” penalties against bad faith actors, including through insertion of their names into the national public credit database; and
- Administrative fines as permitted under the 2019 amendments to the Trademark Law and implementing regulations thereto.
Among the above measures, the acceleration and consolidation of related cases may well generate significant cost savings for victim brand owners.
CNIPA has not clarified how victims of piracy can report their cases and maximize the chances they will be acted upon. However, it is likely that CNIPA will consider reports from victim brand owners and industry associations acting on their behalf. Just how many reports CNIPA will be willing to act upon remains unclear.
CNIPA is planning to publicize “typical cases” throughout 2021 with the aim of naming and shaming pirates and their trademark agencies.
After completion of the campaign in December 2021, CNIPA will presumably continue to deal with bad faith filers and trademark agencies in a more normalized manner.
