INTA Collaborates with Chinese Officials to Encourage Improvements in Trademark Registration Process

Published: August 15, 2019

With 4.34 million trademark applications filed in the first half of 2019, and an examination period of only five months, China remains the world’s largest filer of trademark applications. Against this backdrop, INTA President David Lossignol (Novartis Pharma AG, Switzerland) led a delegation in early July to engage with the China National Intellectual Property Administration (CNIPA) in Beijing, China.

Discussions included CNIPA’s priority of implementing the amended Trademark Law, which becomes effective November 1, 2019, and ways in which INTA and CNIPA can work together to combat the issue of bad-faith trademark applications. CNIPA Deputy Commissioner Zhao Gang noted that one of the most important changes to the Trademark Law is the inclusion of practical grounds for brand owners to use in every stage of trademark registration. These grounds, he explained, will help to fend off squatters, especially those making filings with no intent to use but with the sole purpose of selling marks at exorbitant prices.

However, as Mr. Lossignol pointed out, it remains to be seen how the examination criteria of “intention to use” or “bad faith” will pan out in daily practice. Moreover, the quantification of warehousing is still to be meted out on a case-by-case basis. He enumerated several instances in which the responsibility for brand owners should be shifted, for example: instances of evidential requirements, burden of proof, information sharing with courts of a “blacklist” of bad-faith registrants, civil liability, mandatory assignment to punish the bad-faith actors, and consolidations and accelerations of obvious bad-faith cases.

The INTA delegation also emphasized intellectual property (IP) rights enforcement, including cooperation with China’s administrative and criminal enforcement agencies across a wide spectrum of topics.

Mr. Lossignol went on to meet with close working partners across China, including the Intellectual Property Publishing House, which invited INTA to attend the 10th China Intellectual Property Annual Conference in Hangzhou in September. Mr. Lossignol also visited the Beijing Justra Intellectual Property Center, where INTA hosted a well-attended IP Forum on Cracking Down on Bad-Faith Trademark Registration both in China and outside of the territory.

The delegation next traveled to Yinchuan in the northwest of China to take part in the China Trademark Festival (CTF), where Mr. Lossignol participated in a protocol meeting with CNIPA leadership, the Japan Patent Attorneys Association, MARQUES, and IP attachés of the European Union Embassy and the U.S. Embassy.

Recognizing the increasing need for brand owners to develop strategies regarding localization, INTA held a panel session during the CTF, titled Build Consumers: How to build consumer trust across different generations and countries.The session explored in detail how brands and their legal counsel in Hong Kong and China can work together with attorneys to minimize risk and navigate IP business challenges to achieve a win-win situation.

INTA representatives participated in a variety of events at CTF, including the DotTrademark Reception for China’s growing cohort of Internet and IP-focused professionals. Mr. Lossignol called attention to the fight for brand owner rights in the face of challenges resulting from the WHOIS blackout under the EU General Data Protection Regulation. He also encouraged China’s IP professionals to become more engaged about Internet issues as they relate to IP and brands.

INTA’s outreach at these events underscores the Association’s ongoing commitment to its dual goals in China:1) to assist Chinese brand owners in developing and protecting their brands as they grow outside of China’s borders; and 2) to provide guidance and insight for multinational corporations seeking to protect their brands inside China.

INTA’s China Representative Office, based in Shanghai, represents the Association’s 246 members in China. Working in collaboration with staff at INTA’s headquarters in New York City, the China Representative Office leads the Association’s policy, membership, marketing, and communications initiatives in this jurisdiction. To learn more about INTA’s activities in China, please contact INTA’ s China Representative Monica Su at @[email protected].

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association