Bad faith trademark filings in China

In China the number of trademarks filed is the highest worldwide. Comparing, in the Benelux 22,000 trademarks are filed per year, whereas an astounding 7.7 million trademark applications were filed in China last year. To combat the practice of trademark hijacking, a new law has been passed in China to deal with bad faith filings. The law will enter into force on 1 November 2019.

Under this new law, trademark registrations that are clearly not going to be used are regarded as filings in bad faith. Another example of bad faith filings are the variations on well-known foreign trademarks. The Chinese trademark authority will refuse applications of this kind and the applicant may even receive a warning or a fine. There will also be an opposition period, during which rights’ holders have the opportunity to object to such applications. A nullification action can also be initiated afterwards. Because the register in China is quite full, also with trademarks that have been registered with a different purpose (e.g. to sell them), the new legislation offers possibilities for foreign companies to get their trademarks registered in China.

trademark-registration

Latest news
The Bulldog rightly claims damages from Red Bull
Trademark Escobar parfum contrary to public order
Abcor team in World Trademark Review 1000
Louis Keijzer passes BBMM exam with flying colours
Competitor registers domain name
Our Clients
Follow Abcor
claimant
defendant
claimant
defendant

IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?