The PRC Trademark Law is undergoing its third revision, and “bad faith registration of trademarks” is one of the most discussed topics in the process.
The current Trademark Law does mention, but does not clarify, “bad faith registration of trademarks”. The Legislative Affairs Office of the State Council issued a draft amendment of the Trademark Law in February 2010 for comments from certain public bodies and private enterprises, both domestic and international, and the draft amendment is expected to be sent to the Standing Committee of the People’s Congress for approval in the near future. It is reported that the revised Trademark Law is likely to provide that trademark filings should be made in accordance with the “principle of good faith” and will be prohibited if they are made in bad faith. Such wording will provide a solid ground for trademark examiners to prohibit, and for trademark holders to oppose, bad faith filings. However, to provide both flexibility and certainty for the court and those examining trademark filings, the drafting of the principle should be carefully carried out. In this regard, the interpretation of bad faith by the Supreme Court of 17 July 2001 (the “Interpretation”) can offer some valuable guidance.
The Interpretation gives specific examples of bad faith registration of domain names. The examples in the Interpretation include that the defendant;
- registered another's well-known trademark as a domain name for commercial purposes
- registered or used, for commercial purposes, a domain name that is identical or similar to a registered trademark, domain name, etc., creating confusion with a product or service provided by the plaintiff or the plaintiff's website
- offered to sell, lease, or otherwise transfer such a domain name at a high price in order to gain improper benefits, and the defendant neither used nor intended to use the domain name after registration, while deliberately preventing the rightful owner from registering such domain name
- In addition, any other circumstances may indicate bad faith.
Thanks to the Interpretation, many multinational companies, including P&G, Philips, DuPont and IKEA have appeared in Chinese courts in domain name disputes, and in most cases have won the lawsuits. Most recently the Beijing First Intermediate People’s Court ruled in favour of NCR, a US company, holding that registration and use of the domain name “ncr.cn” was in bad faith.
Further protection against bad faith is expected under the new Trademark Law.