What applicants need to know about Article 4 of the Trademark Law
Trademark applicants in China need to be aware of Article 4 of the Trademark Law and, more specifically, how the China National Intellectual Property Administration (CNIPA) is using it to dismiss trademark registration.
Article 4 was introduced in the 2019 round of amendments and specifies that “any application for the registration of a trademark made in bad faith without intention to be used shall be rejected” as part of an effort to slow the proliferation of trademark filings and hoarding in China. In practice, the CNIPA has used this article to dismiss the registration of a large number of trademarks.
Trademark examiners can invoke Article 4 to refuse a registration ex officio. There are two conditions under which this article can be invoked:
- the trademark has been filed in bad faith; and
- there is proof that the applicant has no intention to use it.
However, in the absence of obvious circumstances (eg, large numbers of trademarks filed by the same applicant), it is difficult to know with absolute certainty whether an applicant intends to use the trademark. Therefore, in practice, the recourse to Article 4 is more often found in opposition or invalidation cases, when the applied-for mark has been preliminarily approved or even registered. There have been several recent opposition decisions that highlight some key ways that the CNIPA can prove lack of intention in trademark prosecution practice.
In China, if a trademark application is filed by a Chinese natural person, the applicant must submit proof of business and its activity. This is usually in the form of a licence of sole proprietorship.
In 2022 a Chinese individual filed two applications for the JAWKU mark in Classes 9 and 28. In the subsequent opposition procedures, the CNIPA found that the applicant’s business licence had been cancelled before the filing date, without a legitimate successor. The CNIPA concluded that the individual had lost their eligibility as an applicant and that, in the absence of active business operations, the opposed mark could not be used on the designated goods and function as a source identifier. Therefore, the CNIPA did not approve the registration of the opposed trademarks based on Article 4.
Trademark trading record
The applicant for the AXV mark in Classes 5 and 42 and its affiliated companies applied for nearly 3,000 trademarks, some of which were a blatant imitation of other brands. They were also found to be offering to sell some of these marks online. In the opposition decisions, the CNIPA held that the filing of such a large number of trademarks – combined with attempts to sell some online – was proof that the trademarks were not filed for normal commercial activities. The CNIPA refused registration for these opposed trademarks, again based on Article 4.
Statistics from Mozlen, an unofficial local trademark database, indicate that as of December 2022, the CNIPA had issued around 680 opposition decisions and 230 invalidation decisions on the basis of Article 4. While these examples do not showcase all of the possible ways the CNIPA could apply the article, in order to avoid rejection in trademark offensive actions, it is crucial that applicants be prepared for the CNIPA to conduct comprehensive searches and make use of what it discovers.
This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight
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