A recent development in China has led to some alterations pertaining to malicious trademark registrations and infringement, trademark counterfeiting, etc.

Accordingly, these changes will come into force as of November 1, 2019.

In line with the new changes, “[a] bad faith application for trademark registration for a purpose other than use shall be rejected.” pursuant to the Amendment in Article 4, Paragraph 1 of the Trademark Law.

However, the new Amendment does not alter the fact that trademark holders in China are still not required to provide proof of use for trademark registrations. In that regard, in case the applicants are willing to file an application for the purpose other than use and are acting in bad faith while doing so, the application will be considered as malicious trademark application.

However, it is still not clear which situations are specific examples of ‘bad faith’ , this is still needed to be clarified with further regulations and rules.

The above changes also cover trademark agencies meaning those agencies are required to comply with the professional self-discipline principle so that they should refuse to take any action for malicious registrations.  

In case a malicious trademark is somehow registered, it will be possible to request the invalidation of that registration through filing a petition.

With the recent development, punitive clauses are also introduced in China. As a consequence, one paragraph is added to Article 68 which stipulates, “[f]or [a] bad faith application for trademark registration, the administrative punishment such as warning and fine, shall be imposed according to the circumstances of violation; and for bad faith trademark litigation, the people’s court shall impose punishment according to the law.”

Should you or one of your team members need further information on this, please contact us at dubai@unitedtm.com.