Perspective | The Significance of Article 44, Paragraph 1, of the Trademark Law for Enterprise Brand Protection
Published:
2025-04-29
In recent years, the volume of trademark applications in China has increased significantly. However, behind the large number of trademark registration applications, there are some acts that violate the principle of good faith. Some applicants have engaged in acts such as clinging to trademarks of others with a certain degree of fame, malicious registration, and hoarding trademarks, not only infringing on the rights of other trademark right holders but also occupying trademark resources. Based on the aforementioned facts, Article 44, Paragraph 1 of the Trademark Law has become the main clause for revoking or invalidating registered trademarks on absolute grounds; "Obtaining registration by other improper means" has played a positive role in judicial practice, effectively cracking down on a batch of malicious registrations aimed at "傍名牌" (riding on the coattails of famous brands) and other improper acts such as hoarding a large number of trademarks for profit.
Summary: In recent years, the number of trademark applications in China has increased significantly. However, behind the large number of trademark registration applications, there are some behaviors that violate the principle of good faith. Some applicants have engaged in behaviors such as clinging to trademarks of others with certain fame, malicious registration, and hoarding trademarks, not only infringing on the rights of other trademark owners but also occupying trademark resources. Based on the aforementioned facts, Article 44, paragraph 1 of the Trademark Law has become the main clause for revoking or invalidating registered trademarks on absolute grounds; "obtaining registration by other improper means" has played a positive role in judicial practice, effectively cracking down on a batch of malicious registrations aimed at "parasitic famous brands" and improper behaviors such as hoarding a large number of trademarks for profit.
I. Case Details
The third party, Dong Company, had already obtained ownership of the trademark "登胜DENGSHENG" in Class 5 "human pharmaceuticals" and other goods as early as 2015, and has continued to use it as its corporate name. On April 21, 2023, the third party, Dong, obtained the trademark "胜登" in Class 10 "medical instruments and apparatus" and other goods, Trademark Registration No.: 63352373 (hereinafter referred to as the "Disputed Trademark"). Dong and the pharmaceutical company are both located in Jinan, and their actions have seriously damaged the prior trademark rights and corporate name rights of the pharmaceutical company. Therefore, the pharmaceutical company filed an application for declaration of trademark invalidity with the State Intellectual Property Office, which deemed the grounds for invalidation to be unfounded and ruled that the disputed trademark should be maintained. Later, the pharmaceutical company instructed my law firm to file an administrative lawsuit with the Beijing Intellectual Property Court, requesting the revocation of the ruling and ordering the State Intellectual Property Office to issue a new ruling.
In this case, based on the applicable requirements for obtaining trademark registration by other improper means, our lawyers argued that the behavior of the rights holder of the disputed trademark constituted the "obtaining registration by other improper means" as stipulated in Article 44, paragraph 1 of the Trademark Law. It was argued that although the reading order of the disputed trademark "胜登" and the pharmaceutical company's "登胜" trademark is different, Chinese people traditionally read from right to left, and the "胜登" trademark is very similar to the "登胜" trademark in pronunciation and character form. Furthermore, it is designated for use on goods closely related to the pharmaceutical company's goods, such as "medical instruments and apparatus", which could easily lead to confusion and misidentification among relevant audiences. Through online searches on the national trademark website, our lawyers also found that in addition to the disputed trademark, Dong, as a natural person, had applied for registration of more than 80 trademarks in multiple categories, including many trademarks similar to those registered and used by others that have high brand recognition, such as "牛栏山", "趵突泉", "度小满", and "牛栏山泉". This clearly shows a subjective intention to hoard trademarks in large quantities for non-use purposes without justification, and to attach to the reputation of other well-known trademarks. After trademark inquiries and comparative analysis, our lawyers believed that Dong's behavior falls under the situation of obtaining trademark registration by improper means as stipulated in the Trademark Law, and submitted the corresponding evidence to the Beijing Intellectual Property Court.
After the hearing, the court supported our lawyers' arguments. The Beijing Intellectual Property Court revoked the original ruling of the State Intellectual Property Office and ordered the State Intellectual Property Office to issue a new ruling.
II. Interpretation and Application of Article 44, Paragraph 1 of the Trademark Law
The purpose of Article 44, paragraph 1 of the Trademark Law is mainly to uphold the principle of good faith in trademark applications and curb malicious trademark registrations aimed at unfair competition and illegal profit-making.
According to the 2021 edition of the Trademark Examination and Trial Guidelines, the situation of "obtaining registration by other improper means" refers to situations where there is sufficient evidence to prove that the trademark registrant obtained registration by other improper means such as disrupting the order of trademark registration, harming public interests, improperly occupying public resources, or obtaining unfair benefits in other ways, other than deceptive means. Their actions violate the principle of good faith and harm public interests. This includes not only trademarks registered by the applicant of the trademark in question but also trademarks registered by natural persons, legal persons, or other organizations that have colluded with the actor or have a specific identity relationship or other specific connection.
The 2021 edition of the Trademark Examination and Trial Guidelines provides specific examples of "obtaining registration by other improper means", which has certain reference significance for individual case determination:
(1) The applicant of the trademark in question applies for registration of multiple trademarks, which are identical or similar to trademarks with a certain degree of fame or strong distinctive characteristics among others;
(2) The applicant of the trademark in question applies for registration of multiple trademarks, which are identical or similar to other corporate names, company names, social organization and other agency names, influential product names, packaging, and decorations;
(3) Other situations that can be deemed as registration by improper means.
On issues involving Article 44, paragraph 1 of the Trademark Law, the judicial and administrative authorities have generally reached a consensus; When there are discrepancies, judicial authorities are more inclined to believe that the situation constitutes Article 44, paragraph 1 of the Trademark Law, and are more forceful in cracking down on malicious trademark registration. Cracking down on malicious registration, purifying the trademark registration order, and creating a high-quality trademark registration environment has become a common consensus; however, on the other hand, a high-quality trademark registration order also depends on the protection of legitimate registration behavior. When applying this provision, we must also be vigilant against using this provision as a pretext to maliciously hinder others' normal trademark registration, thereby disrupting others' normal and reasonable business layouts.
III. Whether the Registration of the Disputed Trademark in This Case Violates the Provisions of Article 44, Paragraph 1 of the Trademark Law
In this case, the third party, Dong, registered a large number of trademarks that are identical or similar to trademarks such as the "登胜" trademark with high brand recognition, and the evidence in the case does not prove that Dong has any intention of actual use. Dong's behavior of registering a large number of trademarks is not justified, and falls under the situation of disrupting the order of trademark registration, harming public interests, and improperly occupying public resources, which falls within the scope of "obtaining registration by other improper means" under Article 44, paragraph 1 of the Trademark Law. Therefore, the court ruled to revoke the ruling of the State Intellectual Property Office on the request for invalidation of the disputed trademark.
IV. Conclusion
Recently, the State Intellectual Property Office legally rejected 63 trademark registration applications, including the trademark "DEEPSEEK" (No. 82848449), and issued a "Notice on the Legal Rejection of Trademark Registration Applications for DEEPSEEK and Other Related Trademarks". It can be seen that the State Intellectual Property Office will continue to maintain a high-pressure stance in cracking down on malicious trademark registration, and will deal with violations of the principle of good faith, malicious application for trademark registration, and attempts to obtain undue benefits in accordance with the law and regulations, resolutely maintaining the order of trademark registration.
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