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       近日，国际知名知识产权网站IPWatchdog发表了嘉权商标代理人谭嘉颖女士撰写的文章《CNIPA Cracks Down on ‘Clout-Chasing’ Trademark Applications》，现予以转载分享。

CNIPA Cracks Down on ‘Clout-Chasing’ Trademark Applicatons

KAVIN TAN
APRIL 4, 2022

“Applying for a trademark registration utilizing popular buzzwords is especially difficult. Even if the application is approved through sheer chance, the CNIPA may later invalidate it ex officio on its own initiative.”

▍I.语言 Linguistics ▍

On February 14, 2022, the China National Intellectual Property Administration (CNIPA) issued a notice regarding “clout-chasing” trademark applications or registrations (the “Notice”). The Notice stated that CNIPA, on an ex officio basis, had refused or invalidated over 400 applications related to “冰墩墩” (Bing Dwen Dwen, official mascot of the Beijing 2022 Winter Olympics) and “谷爱凌”(Eileen Gu, a skier who won three medals in the Beijing 2022 Winter Olympics).

Similar bad-faith trademark applications have not been uncommon throughout CNIPA’s history. In fact, clout-chasing, a specific type of bad-faith trademark application, has become much more prevalent in recent years. In response, CNIPA has issued a number of notices refusing such malicious trademark applications, especially since the April 2019 amendment of the Chinese Trademark Law.

▍Examples ▍

• March 4, 2020: Notice refusing 63 pandemic-related trademark applications with unwholesome influences, predominantly “火神山” (Fire God Mountain, the name of a makeshift hospital established in the wake of the COVID-19 pandemic)
• March 5, 2020: Notice refusing 37 pandemic-related trademark applications with unwholesome influences, predominantly “李文亮” (Wenliang Li, the name of the late Chinese COVID-19 whistleblower)
• February 10, 2021: Notice refusing 78 trademark applications, predominantly those related to “丁真” (Zhen Ding, the name of an Internet celebrity)
• March 24, 2021: Notice announcing a special action plan to combat trademark registrations made in bad faith.
• August 19, 2021: Notice refusing 109 trademark applications, predominantly those related to “杨倩”，“陈梦”or“全红婵”, (names of athletes who competed at the Tokyo 2020 Olympics).
• February 14, 2022: Notice announcing a crackdown on clout-chasing trademark applications and registrations, predominantly those related to “冰墩墩”and“谷爱凌”.

Article 4 of the Chinese Trademark Law was amended in 2019, with an addition stating, “Applications for trademark registrations made in bad faith, which are not intended for use, shall be refused.” Based on this piece of legislation, the CNIPA has been continually fighting against “bad-faith applications” and “trademark warehousing”. In 2021, CNIPA issued a notice titled “Special Action Plan to Combat Trademark Registration in Bad Faith”, implementing strong acts against maliciously trademark squatting of the names of national or regional strategies, public emergencies, major events, public resources, and the names of highly popular public figures. In January 2022, CNIPA issued an additional notice titled “Regulations on the Administration of Intellectual Property Credit of the CNIPA”, listing trademark registration in bad faith as one of the several untrustworthy acts highlighted in its contents. The notice also announced measures such as stricter vetting criteria for fiscal subsidies, disqualification from certain CNIPA-led awards, increased scrutiny, increased inspection frequency, and stricter supervision.

The CNIPA is evidently ramping up its efforts to eliminate bad-faith trademark registrations in China. Currently, administrative warnings and penalties for these bad-faith applications may be issued to either the applicant or the affiliated trademark agency, or to both parties. The purpose of these endeavors is to maintain an honest and fair business environment, encouraging innovation and trade. According to statistics released by the CNIPA, in 2021 alone, it cracked down on 482,000 trademark registration applications that were not intended for actual use.

▍Basis for Refusing ‘Clout-Chasing’ Trademarks ▍

Article 10(1)(h) of the Trademark Law: Any trademark that is harmful to socialist morality or has other unwholesome influences shall not be used as a trademark.

“Socialist morality” refers to the societal norms and standards regulating the everyday behavior and activities of the Chinese public. The term “unwholesome influences” refers to conditions considered detrimental to socialist morals and ethics, generally used to describe words, graphics or other elements with derogatory meanings. The trademark itself may not always bear a derogatory meaning, but its registration by the applicant could have negative effects on the political, economic, cultural, religious, ethnic or social order of China.

▍Reasons for Rejection ▍

“火神山” (Fire God Mountain) and “雷神山”(Thunder God Mountain) were temporary field hospitals, established specifically for the treatment of patients infected with the COVID-19 during the early months of the pandemic. During the course of the pandemic, they symbolized the hopes and anxieties of countless Chinese citizens. Any attempts by businesses or individuals to monopolize the use of these names would likely be harmful to public sentiment.

“全红婵”(Hongchan Quan) and “谷爱凌” (Eileen Gu) are both gold medalists of the Tokyo 2020 Olympics and Beijing 2022 Winter Olympics respectively. It would be unacceptable for any company or individual to own a trademark on their names; this would constitute an infringement of their name rights. It is evident that the trademarking of such names would have “unwholesome influences”, negatively affecting the public’s feelings and likely hurting the applicants themselves as well.

In summary, applying for a trademark registration utilizing popular buzzwords is especially difficult. Even if the application is approved through sheer chance, the CNIPA may later invalidate it ex officio on its own initiative, as well as at the initiative of prior right owners, interested parties or third parties.

▍Think Long Term ▍

According to Articles 4 and 7 of the Chinese Trademark Law: “Applications for trademark registrations in bad faith which are not intended for use shall be refused,” and “The principle of good faith shall be upheld in the application for trademark registration and the use of trademarks.”

A trademark application should ultimately be based on a genuine desire to use the trademark, with the principle of good faith as a premise. A trademark, functioning as a sign to identify and distinguish the source of goods and services, effectively forms the facade of an enterprise. In the long term, a trademark acts as a partner accompanying the gradual development of an enterprise. Thus, it is always better to own a trademark based upon a substantive and far-reaching message, rather than a momentary fad.

▍关于IPWatchdog ▍

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▍作者介绍 ▍

谭嘉颖，经济学学士，嘉权专利商标事务所商标代理人。

毕业于五邑大学经济管理学院国际经济与贸易专业。

2017年加入嘉权，一直从事国内外商标知识产权工作，包括数据检索、注册申请、驳回复审、异议、无效宣告、撤销申请等商标案件，致力于协助国内客户在境外注册商标，包括单一国家注册、马德里国际注册及其后续服务。在企业商标保护方面累积丰富的经验，能够为客户提供完善合理的商标知识产权管理与分析解决方案。