A recent Supreme People's Court (SPC) decision clarified the requirements to cite the prior use defence under Article 59.3 of the Trademark Law. In this regard, the court stated that the only person eligible to cite this defence is the prior user themselves and that such use must have occurred prior to the registration application and the trademark owner's use of the registered trademark. Further, for the first time, the SPC made it clear that geographical scope is a key element in defining the original scope of use.
Geographical indications identify goods as originating from a certain region or locality, where a given quality, the reputation or another characteristic of the good is essentially attributable to the natural or humanistic features of the indicated place. However, if an indication is accredited as a geographical indication in its country of origin, is this sufficient for it to be granted protection in China without being registered as a trademark?
Claims are technical solutions seeking protection and should be a generalisation of the content sufficiently disclosed in a patent description. However, poorly drafted claims that include inappropriate generalisations risk being unsupported by their description. When ascertaining whether a claim of medical use invention is supported, it is crucial to reasonably interpret the scope of the claim.
The State Administration for Market Regulation recently published Certain Provisions for Regulating Applications for Trademark Registration. The new regulations set parameters for determining bad-faith practices and bad-faith applications for trademarks that are not intended for use. They also introduce procedures and countermeasures for identifying not only bad-faith applications, but also perpetrators (ie, bad-faith applicants), facilitators and enablers (ie, unethical trademark intermediaries).
In China, the practice of defensive trademarks appears to be a guiding factor when determining the legitimacy of a trademark application, but said trademarks remain subject to cancellation in case of non-use. The main challenge is the bad-faith strategy of applying to register many different trademarks without the aim of using them. In this respect, the recent revision of the Trademark Law gives hope that such a highly prejudicial phenomenon will be progressively eradicated.