Trademarks are intangible assets and also symbols of enterprises, representing their image. As the enterprise develops, the value of trademarks will continue to increase.
To fully protect the core trademarks or to consider the trademark defensive protection, many enterprises will focus on applying for registration of multiple trademarks in a certain class or apply for multiple trademarks in multiple classes to comprehensively protect their own trademark rights and interests.
This common trademark protection measure, in recent years, has faced the situation of being judged as a malicious application not for the purpose of use. For applications with a large number of trademarks, the National Intellectual Property Administration, PRC ("CNIPA") will issue a trademark examination opinion, requiring the trademark applicant to make a statement on the actual use or real intention of use of the related trademarks and provide necessary evidence.
Faced with this examination opinion, many applicants who are for good commercial purposes have doubts, that is, what is the basis for the issuance of this examination opinion? How should applicants respond?
This article will discuss this issue.
1. Legal Basis and Judgment of Malicious Application Not for the Purpose of Use
On April 23, 2019, the Standing Committee of the 13th National People's Congress decided to amend the Trademark Law, adding "malicious trademark registration applications not for the purpose of use shall be rejected" in the Article 4.1.
The new provision aims to resolutely curb the malicious trademark registration behavior of "not for the purpose of use", resolutely crack down on the behavior of applying for registration of trademarks in batches, and effectively standardize the order of trademark application and registration.
The provisions against malicious trademark registration are scattered in several provisions, such as Article 4, Article 7, Article 15, Article 19, Article 32, and Article 44 of the China Trademark Law.
It is generally believed that trademark malicious registration behavior can be divided into two types:
One type is trademark malicious pre-registration behavior, that is, "hanging famous brands", "rubbing hot spots", and pre-registering the names of public figures, etc., with the core feature of damaging or taking advantage of others' reputation, civil rights, and legitimate interests;
The other type is the "malicious trademark registration not for the purpose of use" behavior, that is, "batch application", "occupying resources", etc., with the core feature of disturbing or impacting the trademark registration and management order.
Both types of malicious trademark registration behavior have both differences and connections.
The "Trademark Examination and Trial Guidelines 2021" clearly define the "malicious trademark registration application not for the purpose of use" in the Article 4.1 of the Trademark Law as "the applicant submits a large number of trademark registration applications, lacks the intention of real use, improperly occupies trademark resources, and disturbs the trademark registration order."
The "malicious" in "not for the purpose of use" refers to the intention of applying for a large number of trademarks not for the purpose of use and the intention of profiting from it
Regarding the "Hanging famous brands", "rubbing hot spots" and other malicious pre-registration behaviors, if only damaging the civil interests of specific subjects and not involving damage to public interests, they should be regulated by relative reasons, and do not belong to the situation regulated by "not for the purpose of use of malicious trademark registration application."
Of course, if the number of malicious pre-registered trademarks is large, and the trademark resources are improperly occupied, and the trademark registration order is disturbed, then Article 4.1 of the Trademark Law should be applied at the same time.
The "not for the purpose of use" in "not for the purpose of use of malicious" means that the applicant, when applying for registration of the trademark, neither has the purpose of actually using the trademark, nor has the behavior of preparing to use the trademark, or based on reasonable inference, there is no possibility of actually using the trademark.
The legislative purpose of Article 4 of the Trademark Law is to curb the malicious application behavior of trademark hoarding and other behaviors that improperly occupy trademark resources and disturb the trademark registration order. Its non-use for the purpose of a large number of trademark applications and the intention to profit from it belongs to the "not for the purpose of use" "malicious" that this clause regulates.
2. Ideas and Evidence for Responding Examination Opinion due to "Malicious Applications Not for the Purpose of Use"
In the face of more and more "Trademark Examination Opinion Notices" issued based on Article 4 of the Trademark Law, requiring trademark applicants to explain the trademark usage or real use intentions and provide necessary evidence, many applicants do not know what angles to answer from.
Now, based on practical experience in trademark affairs, this article proposes the following response ideas:
1) Trademarks already in use
For trademarks that are already publicly used in society, the trademark applicant can submit evidence of use to prove their normal commercial needs and protection needs for the applied trademark.
Specific evidence of use can include trademark creation materials, evidence of trademark use (sales of product, etc.), promotional materials and operation conditions.
These pieces of evidence are quite familiar, similar to the evidence of prior use and reputation used in the opposition and invalidation actions.
For instance, to prove that the trademark was created for commercial purposes, the applicant could submit a design contract and invoice from an advertising design applicant.
To prove that the trademark has been truly used, the applicant can submit evidence showing that the trademark was used on the exterior of buildings, product containers, product sales contracts and invoices, etc.
The range of promotional materials is even broader and can include brochures, advertising materials in newspapers, magazine, offline and online medias, exhibition photos, online and offline promotional activities, and related contracts and invoices, third-party publicity reports, etc.. All of these can prove that the trademark was applied for registration for the sake of good faith commercial purposes.
2) Trademarks intended for use
More and more companies have already begun the trademark application registration process in the stage of preparing for trademark use, which poses a great challenge to the trademark applicant to submit evidence of use.
Since the trademark has not yet been put into use, the trademark applicant can provide applicant business emails, planning documents, industry research reports, and cooperation intentions with other companies, contracts and invoices for equipment purchase, store rental, staff recruitment and other preparatory work for the use of the applied trademark, to prove the applicant's true intention to use the mark.
3) Defensive registration
In order to better protect the prior trademark rights and prevent possible trademark preemptive registration, the trademark registrant will conduct defensive registration in some non-core but highly relevant classes where there is no real use.
In response to official examination opinions, the applications can be approached from the following two aspects:
If the applicant has prior registered trademarks in the designated goods/servicesover same class, the applicant can submit a list of prior trademarks to prove that the applied trademark is close to the creative concept and use field of the prior trademarks. The applicant's defensive registration to better protect the rights of the prior trademark has rational and legal legitimacy.
If there is no prior registered trademark, the applicant can provide information on others' preemptive registration of the applicant's trademark, the applicant's record of filing oppositions, invalidations, and non-sue cancellation actions, to explain that the applicant is expanding the scope of application registration for the purpose oftrademark protection, in order to protect its own trademark rights and maintain a good trademark application registration order at the lowest cost.
We believe the aforementioned evidence can well prove the rationality of the trademark applicant's submission of mass applications.
However, it should be noted that the number of defensive registration trademarks needs to be appropriate, and the behavior of applying for a large number of trademarks beyond the reasonable range without actual use intention may still be identified as malicious application not for the purpose of use.
3. The subsequent process of responding to the examination opinions of malicious applications not for the purpose of use
After responding to the examination opinions within the specified time limit, the CNIPA will not issue any official document to notify the trademark applicant whether the submitted evidence is accepted by them.
Whether it is passed, it needs to be judged by whether the CNIPA issues a formal refusal notification or whether the refusal reason includes Article 4 of the "Trademark Law".
From the above response ideas and evidence, it can be seen that the official is now stricter in reviewing malicious applications for trademark registration.
Both already used trademarks, intended to use trademarks, or defensive trademark registrations should be made with genuine and good-faith intentions for trademark protection, to ensure the smooth operation of the applicant's business.
While retaining evidence in various aspects, applicants may also consider cooperating with more professional trademark agencies to strategically plan their trademark layout from a professional standpoint.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.