In China, the first-to-file principle applies: the first person or company to register a trademark becomes the owner of the trademark. One of the biggest problems of foreign companies is trademark registration in bad faith: usually Chinese companies deliberately register the trademark(s) of a foreign company in order to make a profit from its use or transfer.
Behind such bad faith trademarks are not only the applicants, but also the trademark agencies commissioned by them. To combat the illegal behavior of agencies, CNIPA has issued new regulations and taken action within the framework of the Blue Sky Project. For example, the trademark agency may not accept a commission if it knows or must know that a client’s trademark to be registered is in bad faith.
In such cases, China’s IP authority can issue warnings, impose fines or, in serious cases, even withdraw the agency’s license to conduct trademark agency business. In addition, CNIPA is in the process of setting up a system for disclosing information about patent and trademark agencies as part of China’s social credit system.
As a result of the Blue Sky Project, more and more trademark agencies are now paying close attention to the fact that they do not assist in bad faith trademark registrations. By July 2020, local offices had contacted more than 200 trademark agencies, and applicants have withdrawn more than 800 trademark applications.
For more news about trademarks in China, please attend our IP Update China webinar. Date and link: 16 September 2020 at 10:00 CEST, https://bit.ly/3kEWKse.