On 14 December 2023, the Beijing Intellectual Property Court (BIPC) held a press conference to report on their work on curbing malicious trade mark filings. The Court also released 10 typical cases of curbing malicious trade mark filings. Bingling WU reports.

Examples of malicious filings

These typical cases cover seven administrative cases and three civil lawsuit cases. The administrative cases mainly relate to combating malicious trade mark filings. Situations involving malicious trade mark filings include:

1. Filing a large number of trade mark applications without intention of use. For instance, a liquor company filed more than 300 trade mark applications in multiple classes from 2020 to 2021, without proof of bona fide intention to use or other justifiable reasons.
    
2. Squatting on other parties' trade marks, including a trade mark squatted on by an entity who has a specific relationship with the trade mark owner, geographical indication squatting, commercialization rights squatting and squatting on others’ well-known trade marks across classes. The relevant cases are:
   
   (1) A disputed mark was filed by an educational company for the services “training; education, etc.” in class 41. An academy’s prior mark had acquired a certain fame before the filing date of the disputed mark. The educational company’s former legal representative had been employed by the academy. Under this circumstance, the educational company should have been aware of others’ prior use of the marks; however it still squatted on similar marks for similar services.
   
   (2) The mark “老鹰茶 (Eagle Tea)” was registered for the goods “tea” in class 30 by a tea company located in Chengdu. However, the mark is a geographical indication in China and represents tea from the six townships of Shimian County. Evidence (presented) was insufficient to prove that the tea company's tea products are from the six townships of Shimian County.
   
   (3) A cultural industry company squatted on the title of an influential travel program by CCTV on periodicals, books, news publications, etc., which would easily cause confusion to consumers.
   
   (4) A liquor company registered the disputed mark “快手老铁 (Kuaishou Laotie)” for accounting services in class 35. The cited marks “快手 (Kuaishou)” and “老铁 (Laotie)” are owned by a technology company and the mark “快手 (Kuaishou)” is well-known in the production of programmes, entertainment services, etc. in class 41. Due to the fame of the cited marks, the use of the disputed mark would cause confusion to consumers as well as weaken the distinctiveness of the well-known mark.
    
3. Unfairly occupying public resources means that an applicant files a large number of trade marks that are identical or similar to public use terms, the names of public cultural resources, etc. in multiple classes. For example, an individual filed more than 170 trade mark applications in multiple classes, including “方舱 (Fangcang)”, “火神山 (Huoshenshan)” and “章邱古城 (Zhangqiu Ancient Town)”, which are identical or similar to the names of pandemic-era public facilities and municipal projects.
    
4. In order to circumvent the law, trade mark agencies may maliciously register other parties’ trade marks through their affiliated entities for profit. In one of these typical cases, a trade mark agency filed more than 60 trademark applications in multiple classes in the name of the agency’s senior executive, and many of these trade marks were for sale on a trade mark trading platform.

Civil cases

As for civil lawsuit cases, the BIPC has clearly stated what behaviour constitutes trade mark abuse through two typical cases, i.e., where a party, knowing its registered mark bears a serious defect, seeks an unfair business benefit and harm to others’ legitimate rights and interests, sending warning letters, taking administrative actions and/or filing civil lawsuits.

In another civil lawsuit case, an infringer fully imitated a right holder’s prior brand, product packaging, advertising slogans, sales model, etc. and mixed genuine products with counterfeit products for sale. For such serious infringements of all-round imitations of well-known brands, the BIPC has determined that punitive damages should be applied.

Welcome clarification

Under current circumstances, malicious trade mark filings have not stopped despite repeated prohibitions. The list of typical cases released by the BIPC clarifies the judgment scope and identification standards for malicious trade mark filings, and provides significant direction.

At the same time, the BIPC also plays a protective judicial role in regulating malicious registrations and abuse of trade mark rights, which reflects the BIPC’s consistent judicial attitude towards combating malicious trade mark registrations.

By Bingling WU of Lee and Li - Leaven IPR Agency Ltd., Beijing, China, verified by Julia Hongbo ZHONG, Lee and Li - Leaven IPR Agency Ltd., Beijing, China; Julia is the Co-Chair of the MARQUES China Team.