What are the main factors to be considered in determining trademark squatting in bad faith?

1. Knowing the infringement.

For example, if the other party and you are peers, and your trademark is relatively well-known in the industry, it is impossible for the other party not to know, which is to submit an application for trademark registration knowing that it is preemptively registered;

2. Multiple malicious squatting.

If they have registered a large number of trademarks that are not related to the company's name and main business, it can be basically determined that they have malicious preemptive registration and hoarding of trademarks.

1.The squaquatter takes advantage of the existing relationship with the applicant, such as ** or representative, **, cooperation, territory or other relationships, and knows or knows that it is the respondent's trademark.

2.The squatter takes advantage of the fact that the applicant is well-known or otherwise known about the existence of the prior rights of others by virtue of the popularity or other factors of the trade name, work, design, name, likeness of which the applicant is applying for prior rights.

3.If the squatter claims that the applicant has committed bad faith preemptive registration of its trademark, it needs to consider the originality of the applicant's trademark.

4.The squatter takes advantage of the fact that the applicant knows or should know the existence of the name of the tourist attraction or the name of the place of origin as a public resource because the name of the tourist attraction or the name of origin is well-known.

5.After the registration of the disputed trademark, the squatter, for the purpose of seeking improper benefits, obstructs the legitimate use of others, demands high transfer fees, license fees, and infringement damages from others, or conducts misleading publicity, causing market chaos.

The acts of preemptively registering trademarks in bad faith include: malicious registration of trademarks with high reputation of enterprises and individuals; generic names and industry terminology; the name of the celebrity; Trademarks in the same trade or category.

The main forms of trademark squatting are as follows:1. Copying, imitating, or translating the well-known trademarks of others to apply for registration.

2. The act of preemptively registering the trademark of the person or the representative of the person or the person being represented.

3. Preemptively registering a trademark that has been used by others and has a certain influence.

4. Other acts of preemptively registering the trademarks of others by improper means.

1.Preemptively registering an unregistered trademark previously used by another person.

2.Malicious preemptive registration of another person's registered trademark on goods or services that are not approved for use.

3.Preemptively registering the abbreviation or colloquial name of a well-known trademark registered by another person.

4.Preemptively registering a trademark that infringes on the prior rights of others.

5.Accumulation of trademarks in large quantities other than for the purpose of use.

According to the provisions and practice of China's Trademark Law, bad faith preemptive registration can be mainly divided into the following types:

1) Acts of preemptively registering the trademarks of others in bad faith.

1. Copying, imitating or translating the well-known trademark of another person (Article 13 of the Trademark Law).

2. The act of preemptively registering the trademark of the person or representative (Article 15 of the Trademark Law).

3. Preemptively registering a trademark that has been used by others and has a certain influence (the latter part of Article 31 of the Trademark Law).

4. Other acts of preemptively registering the trademarks of others by improper means (Paragraph 1 of Article 41 of the Trademark Law).

2) Acts of malicious preemptive registration that harm the prior rights of others.

The first paragraph of Article 31 of the Trademark Law stipulates that an application for registration shall not infringe upon the existing prior rights of others, and in fact prohibits the malicious registration of the trade names, designs, works, names, likenesses, etc. of others with commercial value as trademarks.

3) Preemptive registration for the purpose of monopolizing public resources.

The basic characteristics of this type of cybersquatting are that the preemptively registration of a mark that belongs to a public resource as a trademark, hinders the legitimate use of others after the registration of the trademark, causes chaos in the market order, or is likely to cause confusion among the relevant public as to the origin or characteristics of the goods. For example:

1. Apply for registration of the name of the tourist attraction on the "tourism service" project. ("Tianzhu Mountain").

2. Apply for registration of the name of origin with the characteristics of the commodity on the commodity. ("Sun Moon Lake" tea, "Alishan" tea, "Qingling live fish").

3. Apply for registration of a mark lacking distinctive features as a trademark. ("PDA", "Legal Person").

Paragraph 1 of Article 11 of the Trademark Law stipulates that if the application for registration of a trademark lacks distinctive features, it shall not be registered; Article 10, Paragraph 1 (8) stipulates that if the trademark applied for registration has adverse effects, it shall not be registered and its use shall be prohibited.

The following acts will be deemed to be bad faith trademark squatting:

1. Preemptively registering a trademark that has been used by others and has a certain influence by improper means;

2. The accused squatter has not used the trademark or cleared the trademark within three years, and has claimed the first royalty to the person who uses the trademark;

3. Other acts that will be identified as malicious preemptive registration of trademarks.

[Legal basis].

Article 56 of the Trademark Law of the People's Republic of China.

The exclusive right to use a registered trademark is limited to the trademark approved for registration and the goods approved for use.

Article 32.

An application for trademark registration shall not infringe upon the existing prior rights of others, nor shall it preemptively register a trademark that has been used by others and has a certain influence by improper means.

Article 35.

If an objection is raised against a trademark that has been preliminarily approved and announced, the Trademark Office shall hear the facts and reasons stated by the objector and the objectee, and after investigation and verification, make a decision on whether to grant the registration within 12 months from the date of expiration of the announcement, and notify the objector and the objectee in writing. If there are special circumstances that need to be extended, it can be extended for six months with the approval of the administrative department for industry and commerce.

If the Trademark Office makes a decision to approve the registration, it shall issue a trademark registration certificate and make a public announcement. If the objector is not satisfied, it may apply to the Trademark Review and Adjudication Board for invalidation of the registered trademark in accordance with the provisions of Articles 44 and 45 of this Law.

Off. Answers for you:

On March 15, 2021, the State Intellectual Property Office issued a notice on the Special Action Plan for Combating Malicious Trademark Squatting, which clearly identified the following acts as acts of malicious trademark squatting, and further cracked down on malicious trademark squatting:

The special action focuses on cracking down on the following acts of malicious trademark squatting, seeking improper benefits, disrupting the order of trademark registration management, and causing a greater adverse social impact:

1) Maliciously preemptively registering the names of national or regional strategies, major activities, major policies, major projects, or major scientific and technological projects;

2) Maliciously grabbing words and symbols related to public emergencies such as major natural disasters, major accidents, major public health incidents, and social security incidents, harming the societal public interest;

3) Maliciously preemptively registering the names of major events, major exhibitions, or spine symbols with a relatively high reputation;

4) Maliciously preemptively registering public resources such as the names of administrative divisions, mountains and rivers, scenic spots, and buildings;

5) Malicious preemptive registration of public commercial resources such as generic names and industry terminology of goods or services;

6) Malicious preemptive registration of the names of public figures, well-known works, or characters with relatively high visibility;

7) Preemptively registering another person's trademark or other commercial sign with a relatively high reputation or strong distinctiveness, harming the prior rights and interests of others;

8) Clearly violating the prohibited circumstances provided for in Article 10 of the Trademark Law and other violations of public order and good customs, causing a major negative or negative social impact on China's political, economic, cultural, religious, ethnic and other social public interests and public order;

9) The trademark agency knows or should know that the client is engaged in the above-mentioned acts, but still accepts its entrustment or disrupts the order of the trademark ** by other improper means;

10) Other Ming and Qing inspections that clearly violate the principle of good faith.

Hope mine can help you!

1. What are the consequences of trademark squatting?

1. Destroy the normal market competition order, seriously damage the economic interests of normal operators, and hinder China's transformation from a manufacturing economy to a brand economy. The essence of the malicious registration of a trademark is the misappropriation of the goodwill or reputation of others, or the illegal occupation of public resources, which will inevitably undermine the normal order of market competition. In order to deal with the malicious registration of trademarks, enterprises either buy back at the banquet, or invest a lot of manpower and material resources to solve the lawsuit, or register a large number of so-called defensive trademarks in advance, resulting in an unwarranted waste of economic resources.

The proliferation of malicious trademark squatting affects the cultivation of trademark popularity by legitimate business operators, and hinders or even stifles the formation of well-known brands.

2. It consumes a lot of trademark examination and judicial resources, and endangers the order of trademark registration and use. Due to the prevalence of trademark squatting in bad faith, including infringement of the rights and interests of others, occupation of public resources, and trademarks without real intent to use, the already overburdened trademark examiners and judicial personnel have made matters worse, seriously reducing the efficiency of trademark examination and litigation. China's trademark applications and the number of trademark applications have been the first in the world for ten consecutive years, and are still growing at a rate of more than 10 per year.

Due to the long period of trademark examination and the many prior trademark obstacles, it becomes difficult to apply for a normal trademark, which affects the establishment of a normal trademark order.

3. Seriously endangering the international image of China's intellectual property protection. For example, Japan's industrial economy has publicly criticized China's malicious trademark squatting, and the Italian Foreign Affairs Committee has made a special trip to China to crack down on fake Italian brands.

2. Four major countermeasures after being preemptively registered as a trademark in bad faith.

1. File an objection with the Trademark Office.

If the other party has preemptively registered the trademark, if the trademark has not been approved for registration and is still within 3 months of the preliminary examination announcement period, it can file an opposition with the Trademark Office in a timely manner.

2. Submit an application to the Trademark Office for invalidation of the trademark.

After the trademark is registered, it is not a foregone conclusion, and it may be invalidated. According to Article 45 of the Trademark Law, if the other party preemptively registers a trademark in bad faith, the prior right holder may apply to the Trademark Review and Adjudication Board for invalidation of the trademark within five years from the date of registration of the trademark. Of course, if it is a well-known trademark such as Huili, it is subject to more comprehensive protection, and the application for invalidation of the trademark is not subject to the five-year statute of limitations.

3. Submit an application for cancellation of the trademark to the Trademark Office.

According to paragraph 2 of Article 49 of the Trademark Law of the People's Republic of China, if a registered trademark becomes the generic name of the goods approved for use or has not been used for three consecutive years without justifiable reasons, any unit or individual may apply to the Trademark Office for cancellation of the registered trademark. If the registered trademark is not used for three consecutive years after the preemptive registration, the registered trademark can be cancelled, and the registered trademark can be applied for by itself after the revocation.

Of course, applying for revocation is not the first choice, because it is not only necessary to meet the requirements of three years of non-use, but also to be non-use for three consecutive years without justifiable reasons, which is not efficient for prior trademark owners who are eager to protect their rights and interests.

4. Protect trademarks through judicial channels.