Viewpoint... The criteria and scope of influence of trademark malicious registration.
Published:
2024-03-14
In trademark law, "malicious registration" is an important concept. According to relevant laws and regulations, malicious registration refers to the act of preemptively registering the rights of trademarks, domain names or trade names that have been used by others in this field or related fields for the purpose of making profits. This paper will analyze the criteria for determining malicious registration of trademarks and the impact on other trademarks after being identified as malicious registration.
Recently, we received a consultation from a customer about malicious registration of trademarks: it involves two issues, one is about the criteria for judging malicious registration of trademarks, and the other is that if a company has been judged to be malicious registration, does it mean that all other trademarks registered by him are malicious registration?
In trademark law, "malicious registration" is an important concept. According to relevant laws and regulations, malicious registration refers to the act of preemptively registering the rights of trademarks, domain names or trade names that have been used by others in this field or related fields for the purpose of making profits. This paper will analyze the criteria for determining malicious registration of trademarks and the impact on other trademarks after being identified as malicious registration.
Criteria for 1. malicious registered trademarks
In China, according to the Trademark Law and its relevant provisions, the determination of whether it constitutes a malicious registration is mainly based on the following aspects:
1. Applicant's subjective intention:If the applicant knows or should know the trademark of the respondent, and still applies for registration on the same commodity or similar commodities, it can be considered that there is malice.
2. Actual usage:If, after the successful registration of the trademark, the registrant does not actually use the trademark, but attempts to transfer or license it to the original trademark user at a high price, it may be regarded as a malicious act.
3. Violations:If after the trademark is registered, the trademark owner directly accuses the registered person of infringement and makes a claim for compensation, this behavior may also be taken into consideration and the registration is considered malicious.
4. Originality considerations:The originality of the applicant's trademark needs to be assessed in cases where the applicant claims that the respondent constitutes a malicious preemptive registration of its trademark.
5. Visibility factors:If the trade name, work, design, name, portrait, etc. of the respondent's prior rights are well-known, and the applicant knows or should know the existence of these prior rights, it may constitute malicious registration.
Misuse of public resources:If the applicant uses the name of the tourist attraction of public resources and the name of the place of origin to register, it may be regarded as a malicious act.
2. the subsequent impact of a malicious registration
The fact that a company is found to have registered a trademark in bad faith does not mean that all other trademarks of the company are registered in bad faith. In other words, each trademark registration needs to be evaluated separately to see if it meets the criteria for malicious registration.
Of course, companies once identified as having been registered in bad faith may face tougher scrutiny when applying for a new trademark. Trademark offices and courts may pay more attention to the company's previous trademark activities, including whether there has been a similar pattern of behavior and whether there is a tendency to unfair competition.
In addition, if a company's multiple trademarks are suspected of malicious registration, then the company may be considered to be systematically infringing on the trademark rights of others, and thus face more serious legal consequences, such as fines, cancellation of trademark registration and even criminal liability.
Therefore, the determination of trademark malicious registration is based on a series of specific facts and legal provisions. The fact that a company is found to have registered in bad faith does not directly mean that all of its trademarks are registered in bad faith. However, this historical record may have a negative impact on the company's future trademark applications and may lead to higher review standards. Therefore, enterprises should abide by the principle of good faith, respect the intellectual property rights of others, and avoid being caught in the dispute of malicious registration.
Key words:
Related News
Zhongcheng Qingtai Jinan Region
Address: Floor 55-57, Jinan China Resources Center, 11111 Jingshi Road, Lixia District, Jinan City, Shandong Province
