The MARQUES China Team has published an article discussing two decisions of the Supreme People’s Court on bad-faith lawsuits brought by trade mark squatters.

The article is written by Ms Shumin He and Mr Tingxi Huo. It can be downloaded and read on the China Team website here (MARQUES log-in required).

The article explains that, particularly before the amendments to the Trademark Law in 2019, local entities often obtained registrations for famous trade marks in bad faith. Moreover, in some cases these were asserted against the legitimate owners of the marks.

The SPC has given two rulings on this topic. One, from 2014, concerns the trade mark “歌力思” (the Chinese transliteration of ELLASSAY). In 2017 this was designated a guiding case and must be followed by all courts in China.

The other case concerned the trade mark UL (stylised, pictured) was decided in December 2018 and designated one of the top IPR cases of the year. This is not binding on courts, but is an important reference point.

The authors stress that there are three important lessons from these cases: (1) Register wider and earlier; (2) Watch the register and file oppositions; and (3) Fight back!