Blacklist Complaints: A Novel Tool Against Bad-Faith Trademark Applicants in China

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Bad-faith trademark filings can pose a painful obstacle to brand owners’ attempts to register and enforce trademark rights in China. Traditionally, trademark owners have needed to file a broad range of defensive applications, oppose dozens of bad-faith filings as they are published, and/or undertake massive invalidation campaigns against existing bad-faith registrations. These actions are resource-intensive but necessary to keep the Chinese trademark register clear of bad-faith filers.

Importantly, a new process is available to assist rights owners. The China National Intellectual Property Administration (CNIPA) has recently made available a “blacklist complaint” procedure. Rights owners identify bad-faith filers, and the Chinese trademark office will more closely scrutinize suspect applications and registrations at each of the examination, opposition and appeal stages of the trademark life cycle. This is an informal process, not expressly authorized by the Chinese trademark law and yet a powerful tool by which rights owners can inexpensively and effectively flag infringers’ trademark filings for closer review.

A blacklist complaint is a relatively short document that should include a description of the rights owner’s business and scope of registered rights, evidence of the rights owner’s use of its own registered marks in China, and documents showing the promotion and reputation of the rights owner’s marks in China if available. Court and administrative decisions acknowledging the protection of the rights owner’s mark in China can also be included. With respect to the infringer, evidence of bad faith should be identified, such as volume of filings, filings by the same applicant for other well-known marks, copying of the complainant’s mark(s), and lack of intention to use the mark. The cost to prepare and submit a blacklist complaint is comparable to or slightly less than bringing an opposition proceeding.

The CNIPA takes around one month to review a blacklist complaint. If the review determines that the complaint has merit, the infringer will be added to the CNIPA blacklist, and any current and future applications by the infringer will be flagged for any CNIPA examiner in the new application examination department, the opposition examination department and the appeal cases examination department. Examiners in these departments, when pulling up a case, will immediately see an alert in the CNIPA internal database that the applicant has been credibly accused of filing in bad faith.

Even if a complaint is accepted, it is not a panacea. A high-volume bad-faith filer may still get some applications through the examination process if the goods are different enough from those covered by the registrations of the complaining party. The CNIPA has indicated that it does not intend to render the examination process meaningless through use of the blacklist complaint procedure. Additionally, different examiners may make different determinations of how to utilize the blacklist alert when examining discrete applications. However, in our experience, the acceptance of a blacklist complaint can result in a substantial reduction in the number of applications being approved for publication by the same applicant. Thus, particularly in the case of bad-faith filers who are filing dozens or hundreds of applications, the blacklist complaint procedure should be considered as soon as the pattern of bad-faith applications is identified and can be substantiated; it could result in far fewer applications to oppose and deter the infringer from pursuing the bad-faith applications on appeal.

Finally, rights owners, in the course of investigating a bad-faith filer, may find that the filer is squatting on other well-known brands’ marks. Blacklist complaints can carry heavier weight when rights owners cooperate with one another to identify their common problem and seek redress from CNIPA in tandem through individual blacklist complaints submitted simultaneously.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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