Introduction

With the increasing awareness of the commercial value of trademarks, the trend of malicious preemptive registration has become more severe. Many individuals, without any genuine intent to use, register trademarks of public resources such as scenic spots and historical sites, tourist attractions, historical figures, terms with ethnic cultural characteristics, and trending vocabulary, seeking illegitimate benefits. Such acts not only harm the public interest but also disrupt the order of trademark registration and management.

Both at the enforcement and legislative levels, there is growing attention to curbing such behavior, aiming as much as possible to restore the essential function of trademarks—the function of distinguishing the source of goods/services. This article attempts to discuss how to address such issues within the existing legal and regulatory framework. In general, measures such as trademark opposition, cancellation, or invalidation are taken according to the specific circumstances.

I. Opposition

If a trademark is within the three-month period of preliminary approval announcement, an opposition may be filed with the Trademark Office by the prior rights holder or interested party if they believe the trademark violates the provisions of Article 13, Paragraphs 2 and 3, Article 15, Article 16, Paragraph 1, Articles 30, 31, or 32 of this Law, or by any person if they believe the trademark violates the provisions of Article 4, Article 10, Article 11, Article 12, or Article 19, Paragraph 4 of this Law. Among the aforementioned provisions,

The main grounds for opposition can be summarized as:

① Identical or similar to prior trademarks, causing confusion; ② Infringement of prior rights; ③ Lack of distinctiveness of the trademark; ④ Causing adverse effects; ⑤ Malicious registration not for the purpose of use, etc.

In the case of preemptive registration of public cultural resources, it is more often that the trademark lacks distinctiveness or may cause adverse effects. For example, registering the name of a scenic area or historical site in commodity categories closely related to the scenic area, such as tourism or transportation, may be deemed lacking distinctiveness; registering elements related to Buddhist holy sites or religious content in goods or service categories may be deemed likely to cause adverse effects; for registering names of historical figures, well-known place names, scenic spot names, building names, etc., where there is no genuine intent for actual use, registration should be refused.

II. Cancellation

If a trademark has already been registered, it may be subject to cancellation depending on the circumstances. That is, pursuant to Article 49 of the Trademark Law: “If a registered trademark becomes the generic name of the goods for which its use is approved or has not been used for three consecutive years without正当理由, any entity or individual may apply to the Trademark Office for cancellation of the registered trademark.” Some trademark owners hoard large quantities of trademarks across various classes, or the goods/services covered by the registered trademark are not within their business scope. In such cases, the owner likely has not actually used the trademark, and cancellation may be sought under Article 49.

III. Invalidation

1. Invalidation of a trademark pursuant to Article 44, Paragraph 1: “obtained registration by deception or other improper means.”

After a trademark is registered, in addition to the grounds for opposition during the preliminary approval period, there is an additional ground: “obtained registration by deception or other improper means,” i.e., Article 44, Paragraph 1. The legislative intent of this provision is to uphold the principle of public order and good customs, maintain a sound trademark registration and management order, and create a favorable trademark market environment. This can be considered a catch-all provision. The Beijing High People’s Court’s “Guidelines for the Adjudication of Administrative Cases Concerning Trademark Authorization and Confirmation” (hereinafter the “Guidelines”) stipulates that when hearing administrative cases regarding trademark refusal review or trademark invalidation declarations, if other provisions of the Trademark Law can be applied to refuse registration or declare invalidation based on the evidence on file, Article 44, Paragraph 1 shall no longer be applied. That is to say, if the circumstances do not meet the requirements of other provisions, but the trademark registrant’s conduct indeed violates public order and good customs and disrupts trademark management order, one may attempt to apply the “other improper means” under Article 44, Paragraph 1 to invalidate the trademark.

So, what constitutes “other improper means”? The Guidelines provide detailed provisions on this. Section 17.2 stipulates: ” ‘Other improper means’ refers to conduct other than deception that disrupts the trademark registration order, harms the public interest, improperly occupies public resources, or seeks illegitimate benefits, thereby enabling the disputed trademark to be approved for registration. This includes the act of the trademark applicant engaging in large-scale, systematic preemptive registration of others’ relatively well-known trademarks.” Where there is no genuine purpose of use, and there is an unjustified hoarding of a large number of trademarks to seek illegitimate benefits, it may be determined to constitute “other improper means” under Article 44, Paragraph 1 of the Trademark Law.

Related Case 1

Second Instance Administrative Dispute on Trademark Opposition Review of Arc’teryx Equipment Company

In this case, Wan applied for registration of trademarks such as “Aimu,” “Arc’teryx,” “TFBOYS,” and “Kaleco CROCS” across multiple classes of goods. Wan’s aforementioned series of trademark registrations demonstrated a clear intention to copy or imitate others’ well-known trademarks, disrupting the normal trademark registration management order, harming the fair competition market order, and violating the principle of public order and good customs. Furthermore, China adopts a trademark registration system, reviewing whether to grant registration based on the first-to-file principle. However, the value of a trademark itself should be as a sign distinguishing the source of goods/services. Registration should be premised on an intent to use, thereby enabling the trademark to realize its intrinsic value. If an applicant applies to register a large number of trademarks belonging to others with relatively high reputation for the purpose of hoarding and profiting through transfer or other means, this obviously violates the intrinsic value of a trademark, affects the normal trademark registration order, and even impedes the normal business operations of honest and reliable operators in the commodity economy. Therefore, such conduct aimed at large-scale preemption and disruption of the normal trademark registration management order should be prohibited. Referring to the legislative intent of Article 41, Paragraph 1 of the Trademark Law regarding the prohibition of obtaining trademark registration by deception or other improper means, the application for registration of the disputed trademark in this case should not be approved.

One noteworthy point here is that the Trademark Law stipulates that if a registered trademark was obtained by deception or other improper means, the Trademark Office shall cancel that registered trademark. According to the literal meaning of this provision, it can only be applied to cancellation procedures for registered trademarks, not to the examination and approval procedures for trademark applications. However, the Beijing High People’s Court explicitly stated in this case that the aforementioned legislative intent should run through the entire process of trademark application examination, approval, and cancellation. If the Trademark Office, the Trademark Review and Adjudication Board, or the court discovers during the trademark application examination, approval, or corresponding litigation that the trademark applicant applied for registration by deception or other improper means, they may refer to the aforementioned provision to stop such improper trademark application and registration conduct. In other words, the ground of obtaining registration by other improper means can be applied not only to cancellation procedures for registered trademarks but also to the examination and approval procedures for trademark applications.

Related Case 2

Retrial Administrative Dispute on Trademark Invalidation Declaration Application of Shanghai World Senior Management Consulting Partnership

In this case, based on the facts found, Montesquieu was a great Enlightenment thinker and jurist of the French Republic, not an inherent common surname. The World Senior Enterprise, as a Chinese consulting management company, had no historical ties, commercial dealings, or legal relationships with him. Therefore, the act of World Senior Enterprise registering the disputed trademark was hardly justifiable or legitimate. Furthermore, besides registering the disputed trademark, World Senior Enterprise also successively applied to register trademarks such as “Sanyazi,” “Patek Philippe,” “Mo Yan,” “Free Trade Zone,” “Alphago,” and other names of celebrities, others’ well-known trademarks, or social trending terms. This conduct exceeded the needs of normal production and operation, intending to seek illegitimate benefits through the exclusivity of these marks, and was clearly subjectively malicious.

The act of World Senior Enterprise registering the disputed trademark disrupted the trademark registration order, harmed the public interest, and improperly occupied public resources. The original judgment finding that its registration of the disputed trademark fell within the “other improper means” circumstances under Article 44, Paragraph 1 of the Trademark Law was not improper.

2. Additionally, for trademarks applied for after the implementation of the 2019 Trademark Law, relief may also be sought under Article 4 of the Trademark Law.

Article 4 of the 2013 Trademark Law provided: “Any natural person, legal person, or other organization that needs to acquire the exclusive right to use a trademark for its goods or services in the course of production and business operations shall apply for trademark registration with the Trademark Office.” The current 2019 revised Trademark Law specifically added to this provision: “Malicious trademark registration applications that are not for the purpose of use shall be rejected. ” The Guidelines state: If a trademark applicant clearly lacks genuine intent to use and meets any of the following circumstances, it may be determined to violate Article 4 of the Trademark Law: … (4) Applying to register trademarks that are identical or similar to relatively well-known place names, scenic spot names, building names, etc., and the circumstances are serious; (5) Applying to register a large number of trademarks without正当理由. It can be seen that the Trademark Law regulates malicious registration acts not for the purpose of use. Since the 2019 Trademark Law was enacted, many cases have emerged where this provision was used to reject registration applications or invalidate trademarks, such as:

① Examination Decision on the Trademark Application of Jiangxi Ganjing Cultural Media Co., Ltd.

The applicant, Jiangxi Ganjing Cultural Media Co., Ltd., applied to register 161 trademarks, the vast majority being registrations of well-known place names and scenic spot names, including “Tianling Ridge,” “Wudao Temple,” “Cigu Ridge,” etc. Of these, 139 were rejected by the China National Intellectual Property Administration, which explicitly stated in its relevant rejection decision:

“Your company’s large-scale application to register relatively well-known place names and scenic spot names as trademarks constitutes a malicious trademark registration application not for the purpose of use and should be rejected.”

② (2021) Jing Zhong Zhong No. 2143, Fengshan County Shunxing Firm’s Second Instance Administrative Dispute on Trademark Application Refusal Review

Decision under appeal: Shang Ping Zi [2020] No. 229056, “Re-examination Decision on the Refusal of Trademark Application No. 37791140 ‘真龍’.” In this case, the applied-for trademark was a word mark consisting of the Chinese characters “真龍.” The evidence on file could prove that Shunxing Firm had applied for registration of multiple trademarks in classes 25, 32, and 33. In class 32 alone, it had applied for over thirty trademarks. Among these, multiple marks such as “中华,” “老村长,” “蓝马果啤,” and “真龍” were identical or similar to well-known trademarks used by others earlier. Shunxing Firm did not provide a convincing reasonable explanation for its large-scale trademark application behavior, and the evidence it submitted was insufficient to prove that it had genuine intent to use all the trademarks it had applied for registration. Therefore, the act of Shunxing Firm applying for registration including the applied-for trademark had clearly exceeded normal production and operation needs, showing an intent to seek illegitimate benefits by leveraging the reputation of others’ prior trademarks, disrupting the normal trademark registration management order, and constituting the circumstance of “malicious trademark registration application not for the purpose of use” under Article 4 of the 2019 Trademark Law. The applied-for trademark should not be published for preliminary approval.

3. In cases prior to the implementation of the new Trademark Law, and in many cases after the implementation of the new Trademark Law that still applied the 2013 Trademark Law, courts have made factual findings that the trademark registrant registered the trademark “not for the purpose of use” and then applied Article 44, Paragraph 1 of the 2013 Trademark Law (“obtained registration by other improper means”) to invalidate the trademark. For example:

① (2021) Jing Zhong Zhong No. 1398

The original registrant of the disputed trademark, Anqing Yindu Company, applied for registration of more than 800 trademarks across multiple classes of goods, including marks similar to others’ relatively well-known trademarks such as “佳洁乐” and “乐付宝.” This clearly exceeded normal production and operation needs, demonstrating subjective malice in hoarding trademarks. The subsequent transfer of the disputed trademark further evidenced the subjective malice of its original registrant. This behavior of hoarding trademarks not for the purpose of use has severely disrupted the normal trademark registration management order and harmed the fair competition market environment. Therefore, the original judgment and the reviewed decision’s determination that the application for registration of the disputed trademark constituted the circumstance of “obtained registration by improper means” under Article 44, Paragraph 1 of the 2013 Trademark Law were not improper, and this court supports them.

② (2019) Jing 73 Xing Chu No. 13449

The court of first instance held: The plaintiff and its affiliated companies applied for registration of a large number of trademarks that were identical or similar to others’ relatively well-known or highly distinctive trademarks, and this was clearly a malicious registration application not for the purpose of use. The conduct of the plaintiff and its affiliated companies constituted a classic case of “obtained registration by improper means.” Their preemptive registration behavior extensively occupied and wasted public resources, harmed the public interest, and disrupted the trademark registration order. The registration of the disputed trademark violated Article 44, Paragraph 1 of the Trademark Law.

IV. On Whether Article 7 of the Trademark Law (“The application for registration and use of a trademark shall follow the principle of good faith.”) Can Be Applied to Raise Opposition, Cancellation, or Invalidation

Article 7 is not included in the applicable circumstances for opposition, cancellation, and invalidation provisions. However, the principle of good faith is a principle that all trademark registration and use activities, and even all civil activities, should follow. In judicial practice, this provision has not been directly applied in the examination, cancellation, or invalidation procedures of trademarks. The author found relevant cases:

① (2016) Jing Zhong Zhong No. 2457, Second Instance Administrative Judgment on Freescale Semiconductor, Inc.’s Trademark Opposition Review:

“The principle of good faith runs through the various specific provisions of the 2001 Trademark Law. Therefore, Freescale’s appeal ground that the registration of the opposed trademark violated the principle of good faith under Article 7 of the 2001 Trademark Law lacks legal basis, and this court does not support it.”

② (2021) Jing Zhong Zhong No. 7637, Second Instance Administrative Judgment on Trademark Invalidation of Xiamen Xiangtong Information Technology Co., Ltd.:

“Article 7 of the Trademark Law provides that the application for registration and use of a trademark shall follow the principle of good faith. The specific institutional designs of the Trademark Law are also based on this principle, detailed and implemented into specific provisions. However, according to the Trademark Law, this provision is not a specific basis for filing trademark oppositions, requesting declarations of invalidity of registered trademarks, or applying for cancellation of registered trademarks. Therefore, in practice, it can only serve as a guiding principle for applying specific systems to handle trademark matters. On the other hand, Article 44, Paragraph 1 and Article 45, Paragraph 1 of the Trademark Law exhaustively list all legal provisions that can be invoked for declaring a trademark invalid. However, the aforementioned provisions do not include Article 7 of the Trademark Law. Therefore, Article 7 of the 2013 Trademark Law is not a specific invalidation ground.”

The author also reviewed other related cases where applicants for opposition, cancellation, or invalidation claimed that the registration of the disputed trademark violated Article 7 along with other corresponding provisions, but the courts no longer discussed Article 7 and did not directly cite it in their decisions.

In the draft amendment to the Trademark Law (for public comment), signs that are “identical or similar to the names and symbols of important traditional cultural symbols,” “contrary to socialist core values, harmful to socialist morality, or Chinese excellent traditional culture,” and “names of administrative divisions at or above the county level or well-known domestic and foreign place names” are listed as prohibited signs. Under these provisions, relevant public resources may be protected under the explicit stipulations of the future new Trademark Law.

In summary, for public resources that have been maliciously preemptively registered, consideration should be given to whether Article 4 or Article 44, Paragraph 1 of the Trademark Law can be applied to resolve the issue. However, first, depending on the specific case facts, it should be determined whether other specific provisions apply. According to current laws and regulations and the principle of non-retroactivity, the approach more often is to analyze and adopt countermeasures based on the specific circumstances of each preemptive registration act.