INTA and Beijing IP Court Hold Dialogue on Bad-Faith Filings

Published: June 8, 2022

INTA held a joint policy dialogue with the Beijing Intellectual Property Court on May 13, to discuss the Association’s Board Resolution of Bad Faith Trademark Applications and Registrations. The issue of bad-faith trademark applications and registrations is one of the most important trademark issues facing brand owners and professionals in China and globally today. This event reaffirms INTA’s leadership and engagement with key policy decision makers on major intellectual property (IP) matters.

The three-hour policy dialogue focused on legal remedies and sanctions against bad-faith actors and covered several pressing policy issues, including specific policies related to determination of bad-faith applications, pre-trial mechanisms, formalities of docketing administrative cases, and other critical issues relating to suspension in review proceedings and co-existence agreements.

The participating judges further clarified the delineation of relevant provisions in the Trademark Law on curbing large-scale bad-faith stockpiling behaviors, and went into greater detail on other measures, such as the penalties imposed on fabricating false evidence and correspondingly tightening the evidential requirements review, which may put a dent in the bad-faith behavior. More specifically, the court has provided guidance on the co-existence agreements.

In opening remarks, Chief Justice Jin Xuejun noted: “INTA’s reputation as an international not–for-profit organization advocating for trademark and intellectual property far precedes itself. Today’s sharing is the first with a global IP association on this matter, a starting point to build a long-term dialogue and collaboration.”

INTA President Zeeger Vink (MF Brands Group, Switzerland) commended the positive steps the Chinese judiciary has taken to improve the environment for brand owners and consumers. “The four specialized IP courts, 27 IP tribunals established across China, and the broader adoption of case precedence and adherence to guiding or leading cases, have signified the improvements regarding the courts’ understanding and respect for IP,” said Mr. Vink. “At over 120,000 IP cases since establishment in 2014, the courts have been taking a frontline role in adjudicating first-instance administrative trademark cases. That makes the role of the courts tremendously important to INTA’s brand owner members.”

Also participating in the dialogue, Zhigang Zhu (Wanhuida Intellectual Property, China), chair of INTA’s Enforcement Committee—China Task Force, said, “It is strongly recommended to refine with detailed arrangements with regard to the geographical coverage, term of protection, legal remedies, and intended purpose of formulating the agreement, substantiated with evidence of use in commerce and the perception of the average consumer in the co-existence of contested marks. The innovative approach of judicial protection led by the court is a tremendous improvement, and INTA would love to further the exchanges in the future.”

INTA President Zeeger Vink (MF Brands Group, Switzerland) discussed INTA’s global objectives.

In other recent events in the region, INTA successfully concluded virtual delegations with the Generation Administration of China Customs (GACC) on April 7, and with the China National Intellectual Property Administration (CNIPA) on April 22.

During the CNIPA delegation visit, CNIPA Deputy Commissioner Lu Pengqi noted, “With highly professional teams of staff and members, and studies of profound knowledge and expertise, INTA is well known in its profound influence on trademarks and intellectual property. Its contribution is valuable to policymakers worldwide and in China.”

This sentiment was echoed by GACC Deputy General Affairs Department Director Sun Xiaolu, “We are keen to learn the state of legislation and regulation globally, particularly on the emerging trends of counterfeiting, and we welcome INTA and its members to connect with local customs offices, especially the customs offices at important export ports.”

These recent high-impact engagements, focusing on bad-faith filings, prosecution and enforcement actions, and the Chinese IP landscape, do well to further solidify INTA as a go-to resource among Chinese policymakers for expertise, insight, and data on the critical IP issues facing brands and consumers today.

INTA’s China Representative Office, based in Beijing, represents the Association’s 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 Office.

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

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