Xia Junli – Judicial Policies for Prevention of Bad Faith Trademark Registration
Part III
Editor’s Note: This is a translation summarizing the speech by Xia Junli, presiding judge at the Supreme People’s Court’s Intellectual Property Division, at the 2017 annual meeting of the China Intellectual Property Law Association. The speaker herself has approved the content of this article. This article was originally published in Chinese by the Wechat public account: zhichanli. Link to the original here.
Part I of our translation can be found here.
Part II of our translation can be found here.
2. Guidance with publication of model cases and judicial policies
In addition to the SPC’s years long practice in clarifying provisions of the Trademark Law in individual cases, guidance to prevention of bad faith trademark registration has always been provided by publishing model cases and judicial policies. The cases mentioned in section 1, are all published in the SPC’S annual reports on IP cases from 2009 to 2016.
Judicial policies published in recent years are as follows:
- April 2009 –?The SPC’s Opinions on Some Issues Concerning the Serving of the Main Objective When Handling Intellectual Property Trials in View of the Current Economic Situation
- December 2011 –?The SPC’s Opinions on Some Issues in Fully Giving Rein to the Function of Intellectual Property Rights Adjudication in Promoting the Grand Developmentand Grand Flourishing of Socialist Culture and Stimulating the IndigenousEconomy and Coordinated Development
- April 2010 –?The SPC’s Opinions on Some Issues Related to Trials of Administrative Cases of the Granting and Confirmation of Trademark Rights
3. Reference to guiding cases in similar situations
The SPC’s guiding cases play an important role in clarifying and unifying the criteria for application of law in individual cases. They serve as reference for judges in similar trials.There exist quite a few series of guiding cases, among which the 16th?batch that has been published in March 2017 is consisted of nothing but those involving intellectual property. One is the Guiding Case No. 82 where the plaintiff Wang Suiyong sued Shenzhen Ellassay Fashion Co., Ltd. and Hangzhou Yintai Century Department Store Co., Ltd. for trademark infringement ([2014] Min-Ti-ZiNo. 24).
The plaintiff’s claims were not supported by the court which held that the plaintiff had obtained and exercised his trademark rights in “mala fide” against the defendants. His behavior constituted violation of the principle of good faith, damages to others’ legal rights and disruption of healthy competition in the market.
In the “effective judgment” section of the law it is held that the principle of good faith forms the basic criteria for participants in market activities. In a way, it encourages and supports the public to accumulate wealth and create value by honest labor, and further protects property rights and interests that emerge ?from it, as well as people’s freedom and rights in disposing them based on legal and legitimate intentions. In addition, it also requires people not to pursue those rights and interests in bad faith, damaging others’ legal rights, public interest and market balance.
The principle of good faith also applies to civil procedure in securing people’s rights to exercise and dispose their civil and procedural rights within limits stipulated by the laws, as well as preventing people from ill-intentionally and indiscreetly appropriating those rights, causing harms to social and public interests.
Claims should not be supported if they are intended for abuse of this right, which includes obtaining and exercising rights in “mala fide” and disrupting healthy market activities in the aim to take advantage of others’ ?legitimate rights and interests. Practice such as this are in violation of the laws’ intention and spirit.
We may safely draw a conclusion from this case, that malicious trademark preemption and trademark right abuse are clarified and objected in both trademark registration and civil procedure.
4. Regulation by promulgation of judicial interpretations
In January 2017,?The SPC’s “Regulations on Some Issues Concerning Trials of Administrative Cases of the Granting and Confirmation of Trademark Right”?was published. It’s purpose is to standardize and regulate trademark trials by promulgating judicial interpretation.
The document regulates provisions related to procurement and other relationships, protection of prior rights, “improper means” in Article 32 of the Trademark Law, “other improper means” in Article 44, presumption of “bad faith registration” in Article 45 and additional regulations in its Article 15 and 16. It shows how our judicial policies can be upheld, and summarizes applications of law with model cases.
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