April 2022-Notice of the CNIPA on Continuing to Severely Crack Down on Malicious Registration of Trademarks

In the Notice of the CNIPA on Continuing to Severely Crack Down on Malicious Registration of Trademarks just released on April 12, 2022, there are several highlights that deserve our special attention:

1.???In the part of “Strengthen the focus of rectification and crack down on typical acts”, “hoarding trademarks” is listed as the first: even if there is no malicious intention of plagiarizing others' trademarks, hoarding trademarks itself has become the most important object of cracking down on malicious registration;

2.???“Strengthen the pre-examination of the use of trademarks to be transferred”: evidences of use of trademarks are likely to be widely required in the examination of trademark assignment, otherwise the assignment shall not be approved;

3.???A new term “public interest non-use cancellation for three consecutive years”: according to the law, the CNIPA can conduct such non-use cancellations ex officio, but it has never initiated the relevant procedures before. We will wait and see whether a new procedure will be launched this time and how it will be operated. In addition, the proposal of this new term itself shall have a deterrent effect on non-use of trademark;

4.???Send a clear signal of “zero tolerance”, and effectively form high-pressure deterrence! Guide to establish correct trademark registration awareness of “on-demand application”, “true use” and “reasonable protection”.

Notice of the CNIPA on Continuing to Severely Crack Down on Malicious Registration of Trademarks

To Intellectual Property Offices of all provinces, autonomous regions, municipalities directly under the Central Government and Xinjiang Production and Construction Corps, Sichuan Intellectual Property Service Promotion Center; relevant departments of the CNIPA, Trademark Office:

A clean and upright trademark registration management order is an important foundation for promoting the high-quality development of intellectual property undertakings and creating a favorable environment for innovation and business. The national intellectual property system conscientiously implements General Secretary Xi Jinping’s important instructions on intellectual property work, and always maintains a high-pressure situation of cracking down on malicious trademark registration. We have concentrated on special campaigns against malicious trademark squatting, and have normalized the crackdown on malicious hoarding of trademarks, which has achieved remarkable results. In order to further implement the deployment of the 2022 CNIPA Directors Conference, continue to crack down on malicious trademark registration with a “zero tolerance” attitude, build a new work pattern of departmental coordination, top-down linkage, and social co-governance, protect the legitimate rights and interests of market entities, and maintain In the interests of society and the public, and to accelerate the transformation of China from a big intellectual property country to a strong intellectual property country, the relevant guidance is hereby notified as follows:

1. Strengthen the focus of rectification and crack down on typical acts

Focusing more on the concerns of the people and public opinions, in accordance with the several situations where the applications for trademark registration are in bad faith and not filed for the purpose of use stipulated in the “Guide on Trademark Examination and Adjudication”, we strengthen the rectification of malicious hoarding of trademarks and malicious squatting of trademarks which are characterized by “hoarding trademarks”, “nearing famous brands”, “free riding” and “rubbing hot spots”. We focus on cracking down on the following typical illegal acts that violate the principle of good faith, violate public order and good customs, seek illegitimate interests, and disrupt the order of trademark registration:

(1) Malicious registration of trademarks which are the same or similar with the signs of important meetings, important theories, scientific assertions, political discourses, etc. of the Party;

(2) Malicious registration of trademarks which are the same or similar with the signs of national strategies, national policies, major projects, major scientific and technological projects, important events with high popularity, important exhibitions, major archaeological discoveries, etc.;

(3) Malicious registration of unique vocabularies related to major sensitive events and emergencies such as major public health incidents;

(4) Malicious registration of the names of political, economic, cultural, ethnic, religious and other public figures with high reputation;

(5) The number of trademark applications for registration obviously exceeds the needs of normal business activities, and there is a lack of real intention to use;

(6) Reproducing, imitating, or plagiarizing a large number of trademarks or other commercial signs with a certain reputation or strong distinctiveness from multiple subjects;

(7) A large number of applications for registration of the same or similar signs as public cultural resources, administrative division names, common names of goods or services, industry terms, etc.;

(8) Transferring a large number of trademarks and the assignees are scattered, and disrupting the order of trademark registration;

(9) Where the trademark agency knows or shall know that the client is engaged in the above-mentioned acts, but still accepts the commission or disrupts the order of trademark agency by other improper means.

(10) Other acts that have a significant negative impact on the order of trademark registration management, social public interests and public order in China.

2. Strengthen monitoring and early warnings to achieve accurate identification

In the whole process of trademark registration, improve the key monitoring list of actors of malicious trademark registration not for the purpose of use, focus on monitoring market entities engaged in related behaviors, and improve the accuracy of cracking down on malicious trademark hoarding. Continue to improve the prohibited word database and guide word database for trademark registration, give full play to the identification, early warning and prompt interception functions of the examination and adjudication system, and improve the pertinence of cracking down on malicious trademark squatting. Comprehensively use methods such as reporting verification, public opinion back-checking, petition checking, data checking to find clues about malicious trademark registration. Accelerate the establishment of an intellectual property protection information platform, make full use of the Internet and information technology, break through data barriers in intellectual property links such as administrative law enforcement, information inspection and others, and improve the guidance efficiency of trademark agency supervision, untrustworthy entities and data management, and trademark enforcement business.

Where local intellectual property management departments and trademark examination cooperation centers find market entities suspected of malicious trademark registration in their work, they shall remind and discourage them, and submit relevant clues to provincial intellectual property offices for summarization, verification and submission of a list of names to the CNIPA.

3. Strengthen system governance and punish severely in accordance with the law

Continue to improve relevant examination standards, operating procedures and procedural norms, and prevent and regulate malicious trademark registration to the greatest extent within the discretionary space given by the law. Where market entities in the key monitoring list handle trademark business, they shall be strictly examined and adjudicated according to law, and the obligation to provide evidence for actual use shall be strengthened. Establish bottom-line thinking, strengthen the management and control of trademarks with major adverse effects, and continue to take countermeasures such as joint review, rapid rejection, registered trademark invalid declaration ex officio, and notification exposure, etc. Restrict malicious hoarding of trademarks for transfer, and strengthen the pre-examination of the use of trademarks to be transferred to make them unprofitable. Guide social forces to widely participate in the source management of trademark registration, orderly promote the “public interest non-use cancellation for three consecutive years”, and release idle trademark resources. Based on the application of the party in interest or find out ex officio, the comparison and verification of the consistency between the industry in which the applicant's business scope is located and the goods or services designated for use of the trademark shall be strengthened. Timely forward clues about malicious trademark registration cases to the local intellectual property management department and guide the investigation and the processing, strengthen the tracking of the results handled by local institutions, and incorporate the local handling into the administrative protection assessment.

All local intellectual property management departments shall investigate illegal acts, and carry out administrative punishments with relevant departments, and punish the repeated malicious registration of trademarks according to law, and determine them as serious illegal and dishonest acts in accordance with laws and regulations. All trademark examination cooperation centers shall strictly examine relevant cases in accordance with the law, and promptly report typical cases that have general guiding significance or reflect new changes in malicious behavior.

4. Strengthen agency supervision and maintain industry order

Implement a strict trademark agency filing management system, strengthen the real-name system management of agency practitioners' filing, improve the signature system for trademark business handling, and deepen the coordination and linkage of trademark examination and adjudication and filing management. The clues of cases of malicious trademark registration and illegal agency acts shall be forwarded to the local intellectual property management department, and centralized investigation shall be organized. In case of serious circumstances, the acceptance of its trademark agency business shall be stopped. Strengthen the comprehensive management of platform-based trademark agencies, and guide the establishment and improvement of systems such as malicious application screening, malicious application notification, conflict of interest review, and online application de-duplication verification.

Local intellectual property management departments shall strengthen the supervision of trademark agencies, crack down on malicious trademark registration and illegal agency acts through reminders to talk, interviews for rectification, inspection and supervision, and administrative penalties, and disclose the administrative penalty decisions to the public.

5. Strengthen credit supervision and implement joint punishment

Carry out credit supervision in the field of trademark registration in accordance with laws and regulations. These parties with serious violations of law and trust identified in accordance with the “Measures for the Administration of the Lists of Parties with Serious Violations of Law and Trust by Market Regulation Authorities” and the “the Provisions of the China National Intellectual Property Administration on Intellectual Property Credit Management” shall be listed as key supervision objects during the management period, and may not enjoy policies and facilitation measures such as rapid examination of trademark registration applications. Share the list of parties with serious violations of law and trust with other relevant departments in accordance with laws and regulations, and implement joint punishments on the parties with serious violations of law and trust.

All local intellectual property management departments shall combine the development of local credit evaluation work and make full use of the results of credit evaluation to implement classified management, and strictly supervise the parties with serious violations of law and trust.

6. Strengthen coordination and cooperation to form joint forces of co-governance

Further play the role of the joint working mechanism for severely cracking down on malicious applications, and jointly study and handle new major, difficult and complex cases. In close communication with the State Administration for Market Regulation, improve the supervision and coordination mechanism for trademark administrative law enforcement, and unify law enforcement standards and improve the effectiveness of crackdowns through individual case supervision and similar case guidance. Strengthen the organic connection between the administration and the judiciary, establish an information sharing mechanism and a pre-trial communication mechanism for major cases, promote the consistency of examination authorization standards, administrative law enforcement standards and judicial judgment standards, and promote the linkage of administrative and judicial procedures to handle cases in batches. Study and optimize trademark fee standards, and promote the establishment of a step fee system.

All local intellectual property management departments shall put an end to the number of trademarks as the main basis for work assessment. The application for trademark registration (including Madrid international registration of trademarks) shall not be supported in any form such as funding or awards, etc. According to the actual situation of each place, formulate a timetable for the cancellation of funding and incentive policies, strictly implement, and incorporate into the assessment. Support industry associations in various fields to establish and improve industry self-discipline mechanisms for trademark registration. Implement territorial supervision responsibilities, strictly prevent and control, and promptly prevent malicious trademark registration from spreading outside the region. All trademark examination cooperation centers shall work closely with local intellectual property management departments, and actively provide clues about the malicious registration of trademarks by local market entities.

7. Strengthen institutional guarantees and improve policies

Continue to promote the revision of the Trademark Law and its implementing regulations, accelerate the introduction of relevant regulatory provisions on trademark agency, establish a regular revision mechanism for the Guide on Trademark Examination and Adjudication, increase the cost of violations of laws and regulations, and continuously improve the laws and policies against malicious trademark registration.

All local intellectual property management departments shall actively cooperate with the revision of trademark laws and regulations. Promote the regulation of malicious registration of trademarks in local intellectual property legislations, and intensify the crackdown by improving credit evaluation mechanisms and penalty dishonesty mechanisms, increasing penalties, improving fast-handling linkage mechanisms and regional law enforcement cooperation mechanisms, and prohibiting abuse of rights, etc. All trademark examination collaboration centers shall actively cooperate with the revision and improvement of the Guide on Trademark Examination and Adjudication.

8. Strengthen positive guidance and create a good atmosphere

Strengthen the interpretation of laws and policies through multi-channel and multi-platform, publish typical cases and the market entities and agencies with violations of law, send a clear signal of “zero tolerance”, effectively form high-pressure deterrence, and guide market entities and agencies to actively conduct self-examination and self-correction to create a strong atmosphere for the normalized crackdown on malicious trademark registration.

All local intellectual property management departments, trademark examination cooperation centers, trademark business acceptance windows, and various intellectual property public service agencies shall carry out extensive publicity through various methods to guide market entities, agencies and the general public to consciously resist malicious registration of trademarks, guide trademark applicants to establish correct trademark registration awareness of on-demand application, true use, and reasonable protection.

The relevant departments of the CNIPA, the local intellectual property management departments, the trademark examination cooperation centers and the local trademark business acceptance windows shall further improve their positions, take active actions, cooperate with superiors and subordinates, pay close attention to implementation, and strengthen supervision and inspection to ensure that all work is carried out solidly and the implementation is effective.

It is hereby notified.

CNIPA

March 29, 2022

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