1. New Guidelines for Trademark Examination and Trial Took Effect
The China National Intellectual Property Administration (CNIPA) published the new Guidelines for Trademark Examination and Trial (the “Guidelines”) with effect from January 1, 2022. It bridges the gaps between the previous edition and the amended PRC Trademark Law, which took effect in 2019. Particularly, a new chapter concerning the examination of bad faith applications with no intent to use has been added, summarizing factors considered by the CNIPA with real-life examples illustrating their decision-making progress. Exceptions to the general ban are for defensive applications and applications for future business needs, provided that they are made within a necessary and reasonable scope.
2. Pro-Rightowner Examination Practice
The CNIPA is well aware of the phenomen of squatters incorporating multiple companies (some are even incorporated outside China, e.g. Hong Kong and the UK to create false impressions that they are legitimate foreign companies) and assigning trademarks from one entity to another to keep the number of bad faith filings to a minimum. From our recent favourable cases, we observe that the CNIPA will now also take into account the trademark filings made by related individuals and companies as well as assignors. We also notice that it is no longer a perquisite to show that a squatter owns a large number of bad faith filings. In one of our cases, the CNIPA recognised bad faith although the squatter and the assignor owned only 29 applications as they are unable to prove their intent to use nor explain the origin of the trademarks.
