Managing Intellectual Property – Bad faith trademarks come under fire in China
Proposed changes to the trademark registration system in China can target longstanding enforcement issues that brand owners have been encountering because of bad faith marks. By Karry Lai, Hong Kong.
Under the proposed provisions, specifically Article 4.1, CTMO may require applicants to provide evidence of intent to use trademarks. “It’s unclear what types of evidence will be required. But the provision would shift the burden of proof to the applicant to show good faith, and before the victim brand has to spend on legal costs to address the application,” says Joe Simone, partner at IP consultancy SIPS in Hong Kong.
Another concern relates to the level of transparency of petitions. “It’s unclear if CTMO will be obliged to report back to the petitioner after it decides on steps to take after it has considered the matter,” says Simone. “It would be best if petitioners can thereby confirm the results of their filings more quickly, thus giving them more time to consider further steps against pirate marks where petitions are rejected. This is how things work in jurisdictions like Japan through procedures relating to interferences.”
See SIPS article: Draft SIPO Provisions for Addressing Bad Faith Registration in China