Mr. Jason WANG, partner at Beijing East IP Law Firm, published the article titled “Trademark Distinctiveness Affects the Determination on Bad Faith Filing” on the China Trademark magazine (Issue 8, 2014). The China Trademark magazine is a monthly magazine supervised under the State Administration for Industry and Commerce (SAIC, who oversees Chinese Trademark Office and Trademark Review and Adjudication Board) and hosted by the China Trademark Association.
The article presents the author’s opinions based on systematical analysis of relevant judicial practice and cases. The article holds the view as follows: The latter section of Article 32 of the Chinese Trademark Law 2013 (Article 31 of the Chinese Trademark Law 2001) provides that trademark application shall not be approved for registration where it is applied to “preemptively register by unfair means a trademark of certain reputation another person has used” (the “bad faith filing clause”). According to the literal interpretation of the bad faith filing clause, the reputation of the prior use trademark and the bad faith of the applicant of the disputed trademark are the two factors of applying the bad faith filing clause. In addition, the originality of the trademark (namely the inherent distinctiveness of the trademark, generally referred to as “trademark distinctiveness”) is the premise and critical factor in the application of the bad faith filing clause, which has substantial affect on the two abovementioned factors. Specifically speaking, the trademark distinctiveness imposes direct affect on the requirement of burden of proof for the reputation of the prior trademark, and the trademark distinctiveness is a critical factor in the determination on the bad faith of the applicant of the disputed trademark.
The article emphasized the analysis on the two typical and high-profile trademark litigations, respectively “Duck King in Chinese” case (China Courts 2013 Top 10 Innovative IP Case) and “Fu Mei Si in Chinese and FMS” case (Top 30 Typical IP Case of the Supreme People’s Court Annual Report 2013), both of which are the retrials heard by the Supreme People’s Court in 2013. Based on the above analysis, the author holds the view that the trademark distinctiveness is a critical factor in the determination on the bad faith of the applicant of the disputed trademark.