Update on China Trademark Office‘s review of “malicious trademark registration applications not for the purpose of use”

Recently, at a symposium organized by the China Trademark Association and the China Trademark Office, it was learned that the Trademark Office is stepping up its crackdown on "malicious trademark registration applications not for the purpose of use" in Article 4 of the Trademark Law. In the examination of trademark registration applications, the Trademark Office will consider the applicant's recent trademark application volume, applicant status, application history, trademark assignment history and other factors, and then determine whether it is necessary to apply Article 4 of the Trademark Law to reject it. Applicants who file a relatively large number of registration applications in a short period of time and trademark assignors who transfer trademarks to unspecified multiple parties may become the main focus of the Trademark Office.

However, considering that companies have legitimate needs for trademark defense and reserve, the recently released "Trademark Examination and Trial Guidelines" also clarified that Article 4 of the "Trademark Law" is not applicable to the following circumstances:

(1) The applicant's application for defensive purposes is the same or similar to its registered trademark; and

(2) Applicants shall apply for trademarks in advance in a proper amount for future business with realistic expectations.

However, it should be noted that not as long as a large company or a high-profile company can be exempt from the refusal of Article 4. If the application volume of large enterprises is huge or the trademark applied for is obviously suspected of infringing public resources, it may still be rejected due to Article 4. However, before the decision is rejected, the Trademark Office will generally issue an examination opinion notice to the applicant as an opportunity to appeal. In addition, when a trademark is assigned from one entity to multiple related entities, it may also be suspected that the trademark registration or application involved is not for the purpose of use, but for the purpose of profiting through the assignment, so that it is required to provide evidence of use or intention to use the trademark. If the applicant receives an examination opinion notice or a supplementary notice concerning Article 4 of the Trademark Law, the applicant shall take it seriously and respond well accordingly.