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applications. In China, a company
seeking to register
its trademark must file a separate application for each
class in which it wishes to protect its mark. China has
forty-five different trademark classes, each of which
has multiple subcategories, which means that in order
for a company to be fully protected, it must file dozens
of registrations. A failure to comprehensively do so can
leave a company open to exploitation by an opportun-
istic squatter.
As a result of this system, some of the world’s most
sophisticated brands and multinational corporations—
including Tesla, Pfizer, Apple, and Hermes—have been
victims of Chinese trademark squatters. All of these
companies have learned the same expensive lesson,
as a sophisticated trademark squatter can cripple a
business in China. When companies fall
victim to
trademark squatting, they may be prevented not only
from selling their goods within China, but may also
from manufacturing products in China for export else-
where—unless the company pays the trademark squat-
ter to buy its mark back. Moreover, a company that
does not buy back its mark runs the risk of the squatter
selling the mark to a counterfeiter, which would dam-
age the value of the original mark both in China and
abroad.
For these reasons, trademark squatting and the as-
sociated weaknesses in China’s
trademark system have
been a longstanding point of concern in the U.S.-Chi-
na bilateral economic relationship. Since 2007, in its
report to Congress on China’s compliance with WTO
obligations, the Office of the U.S. Trade Representative
has expressed concern about weaknesses in China’s
legal framework that fail to deter trademark squatters.
Most recently, as an outcome of the 25th meeting
of the U.S.-China Joint Commission on Commerce
and Trade (“JCCT”) in December 2014, the U.S. and
China committed to prioritize the issue of bad faith
trademark filings, and strengthen communication and
exchange on the issue through existing bilateral and
multilateral channels. While the JCCT commitment
is a positive step, the more significant and potentially
more substantive development for companies dealing
with trademark squatters is the implementation of the
Amended Trademark Law.
The Amended Trademark Law targets bad
faith applications
One of the most significant changes within the
Amended Trademark Law is the addition of a good
faith filing requirement. Article 7 of the Law introduces
the principle of good faith in trademark use and regis-
tration, the inclusion of which has been described by
some legal commentators as a catch-all provision pro-
viding parties with a mechanism for guarding against
bad faith registrations that have yet to be stopped
by other measures under existing law. As we discuss
below, however, whether Article 7 is
interpreted and
implemented by courts in such a manner remains to be
seen.
The Amended Trademark Law also addresses the
disturbing trend of Chinese trademark agents abusing
their positions and filing bad faith marks. Foreign com-
panies applying for trademarks in China are required
under Chinese law to register their marks through a
state-designated trademark agent. Increasingly, some
of these trademark agents have tried to profit from
their knowledge of the system by filing bad faith appli-
cations. Article 19 of the Law specifically targets this
trend, stating that:
Investment
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A trademark agency shall abide by principles of good
faith, abide by relevant laws and administrative regu-
lations, and handle trademark registration and other
trademark matters according to the instructions of its
principals; a trademark agency
shall also be obliged to
keep secret any confidential information and trade or
business secrets obtained through the performance of
its duties.
In addition to the above two articles, the Amended
Trademark Law contains other provisions that would
benefit legitimate trademark holders in protect-
ing them against squatters. For instance, under the
Amended Law, applicants for trademarks now only
need to submit one application for multiple classes,
thus simplifying the registration process and blocking
the ability of squatters to
register marks in classes in
which the original owner had failed to file separate
applications. Moreover, in calculating damages, the
Amended Law lowers the burden of proof for the trade-
mark owner so as to allow courts to order an infringer
to provide its accounting books and relevant materials
necessary to calculate damages. Statutory damages
have also been increased from a cap of RMB 500,000
to RMB 3,000,000, and punitive damages are now
permitted for up to three times the normal damages.
The law will only be as effective as relevant
administrative and judicial bodies
Without clarity and consistency in enforcement, the
Amended Trademark Law will be merely a paper tiger.
It will stand as a high-minded aspiration with no im-
pact on mitigating abuses by trademark squatters. Spe-
cifically, the China Trademark Office (“CTMO”), which
has initial jurisdiction
over trademark disputes, the
Trademark and Adjudication Board (“TRAB”), which
handles appeals of CTMO decisions in trademark ap-
plication and opposition matters, and relevant courts
must all uniformly realize their commitment to ending
bad faith trademark squatting.
Influential members of the Chinese judiciary have
publicly expressed their concern with the prevalence
of trademark squatting. In December 2012, judges in
the Beijing Number 1 Intermediate People’s Court held
a press conference highlighting the findings and rec-
ommendations of a study into the cause, characteristic
and judicial response to trademark squatting. Among
their recommendations, the
court found that it should
exercise proper judicial discretion and admit evidence
and accept proof with a view to prohibiting squatting.
To demonstrate this point, the court subsequently
delivered judgments in six cases against trademark
squatters.
However, inconsistency among the administrative
and judicial bodies with jurisdiction over trademark
disputes has stifled such efforts thus far. Specifically,
in recent months, legitimate rights holders have found
themselves victorious in their claims against squatters
in court, only to find that lower bodies such as the
TRAB ignore these jurisprudential decisions in their
determinations on other classes of the same marks
filed by the same squatters. This failure on the part of
the TRAB to apply the good faith standard established
in Article 7 of the Amended
Law to similarly registered
marks being challenged in ongoing opposition pro-
ceedings is disconcerting. Only through consistency,
stability and predictability in the decision-making and
enforcement of trademarks by all of the Chinese adju-
dicatory bodies will the Amended Law prove to have
real teeth.
William M. Leahy
Associate, Akin Gump Strauss Hauer &
Feld LLP
Stephen Kho
Partner, Akin Gump Strauss Hauer &
Feld LLP; Former associate general
counsel and acting chief counsel on
China enforcement, the Office of the
U.S. Trade Representative (USTR)
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