By Amanda B. Agati and Robin L. Warren
Trademark hoarders, pirates and other bad faith actors can be a real pain, but the China National Intellectual Property Administration’s (“CNIPA”) attempt to put them out of business may also have negative consequences for brand owners.
The CNIPA is proposing amendments to the PRC Trademark Law, including filing a Statement of Use to secure a Chinese trademark registration and prohibiting duplicative registrations.
Taken together, these changes could prevent brand owners from filing defensive applications and re-filing applications in good faith to preserve their rights once their registrations become subject to the use requirement.
There’s good news, though—the proposed amendments include a system that makes it easier for brand owners to recapture marks from trademark pirates during administrative proceedings, as well as provisions that broaden the criteria for well-known mark recognition.
Stay tuned for more information about how these changes may affect your brand.