CHINA Trends and Developments Contributed by: Qiang Ma, Jingtian & Gongcheng
registration because of its “misleading effect” when used on goods like paper towels. • The entirety assessment doctrine is frequently violated. For those integral and inseparable marks, the CNIPA tends to extract letters that are deceptive only when used individually and accordingly determine the deceptiveness of the entire trade mark. For example, the trade mark MIAROMA was rejected because the CNIPA extracted ROMA, the capital of Italy, from it. Another example is that the CNIPA extracted 阿里 , an irrelevant place name in Tibet, from the mark 阿里巴巴 (the name Ali - baba from the fairy tale) and then rejected its registration. • The CNIPA relies heavily on machine transla - tion to determine the meaning and deceptive - ness of English trade marks. However, most obscure foreign words and uncommon mean - ings are not really understood by Chinese consumers and will therefore not generate deceptive or misleading effects in the market. Rather than random machine translations, the perception of consumers should be the ultimate test for determining deceptiveness. Relative grounds: strict similarity standards and dismissal of coexistence fact and LOC Examiners reject more trade marks on the grounds that they are similar to prior trade marks, although they are actually not similar and will not confuse consumers. An example is the blocking of Huawei’s mark MATE RS by the prior mark MASTER despite the obvious differences in appearance and meaning. Furthermore, overcoming blocks of prior trade marks has also become more difficult in the last year. On the one hand, it is difficult in practice for the earlier trade mark owner to register a subse - quent serial mark, despite the fact that its earlier registration and the intervening registration have
coexisted for quite some time. The continuation registration provided in Beijing High People’s Court Trial Guideline (the “Trial Guideline”) is not being implemented well. The examination criteria for continuation applications of coexist - ing marks should be optimised. On the other hand, the CNIPA no longer accepts LOCs and the court only accepts them for moderately dis - similar marks. In the context of the low reversal rate in review proceedings, applicants have to rebrand their marks after exhausting all possible proceedings, which is costly and might nega - tively affect business operations. Bad faith registration under continued attack, while extension of absolute grounds to protect private rights deserves attention The CNIPA and courts have been making efforts to tackle bad faith trade mark filings on abso - lute grounds in the last few years. The CNIPA issued a System Governance of Trade Mark Malicious Registration to Promote High-Quality Development work plan last year and the Beijing IP Court released ten typical cases prohibiting bad faith trade mark filings several months later. The absolute clauses have been expanded to protect private rights, which deviates from the original legislative intention of tackling bad faith registration. Intensified crackdown on malicious applications with lowered quantitative criteria for “large-scale” squatting or hoarding The CNIPA has become more cautious about malicious registration, even if the applicant’s fil - ing number is low. The CNIPA and courts used to consider dozens or hundreds of applications as unlawful “large-scale” squatting or hoarding. Nevertheless, in recent years, the standard for the number of filings has been greatly lowered. In the rulings of PLENITY and several other trade marks, applicants who sought merely four
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