Trade mark piracy has long been a serious problem in China. The China National Intellectual Property Administration (CNIPA) has made great efforts over the past few years to fight bad-faith applications, including by blacklisting more egregious trade mark pirates and sua sponte rejecting more obvious bad-faith applications.

The threat of piracy remains, however, making it important for brand owners to understand the tools at their disposal to fight bad-faith trade marks. Yunze LIAN of the MARQUES China Team provides a guide.

Chinese laws and regulations against bad faith filings

• Trademark law
• Anti-unfair competition law 
• Provisions of the Supreme Court on trade mark issues
• Provisions on Standardizing Trade Mark Applications
• Special Plan for Combating Bad Faith Filings
• Notice on Continuously and Severely Combating Bad Faith Filings
• Regulations on the Administration of IP Credit
• Management for the List of Serious Illegality and Dishonesty

Principles and rules against bad faith filings in the trademark law

The principles of [intent or an ability] to use good faith apply:

Article 4: Applications that are not intended for use shall be rejected.

Article 7: Applications shall follow the principle of good faith. Based on these two principles, the following rules have been promulgated:

Rule 1 Filings in large quantities

Under the principle of use, examiners now regularly refuse filings in large quantities on the ground that the filings are not for use. In the past years it was quite common for a person or company to register hundreds or thousands of trade marks without a valid intention to use the mark.

The true intention behind these filings has quite often been to warehouse and hold the marks for sale, holding the real owner of the mark hostage if/when the pirated mark is cited against their application. There are many trade mark sales markets, which is the platform for the trade mark hoarders and hijackers to sell their trade marks.

Tip: When you file oppositions or invalidations, run a proprietor search against the pirate to identify all of their trade marks to support the assertion that they are a bad-faith filer. Such evidence can help to convince the examiners that the disputed trade marks are filed or registered without intent to use.

Tip: If many trade marks were registered by the other party with no use intention, there is a very good chance of knocking the mark out via a non-use cancellation application, which becomes available three years after the mark’s date of registration.

Rule 2. Filings of well-known trade marks

If the trade marks of the true brand owner are able to be deemed “well known” under Chinese law, a targeted brand owner can file oppositions or invalidations against the bad faith filings on any goods/services in any classes outside the usual five-year time limit on such actions. In determining whether a given mark is well-known, the examiners will consider the following factors:

• the extent of the public's familiarity with the trade mark;
• the duration of continued use of the trade mark;
• the duration, extent and geographical scope of the promotions for the trade mark;
• the record of the trade mark being protected as a well-known trade mark;
• any other factors to prove the trade mark is well-known.

Tip: As it is very difficult to prove the well-known status of your mark, your oppositions or invalidations should focus on the trade mark pirate’s bad faith. In addition to Rules 1-4, you can also base such actions on Rule 5, below, a kind of catch-all provision covering many different types of bad faith conduct.

As long as you can prove bad faith on the pirate’s part, the examiners will likely support your oppositions or invalidations without the need to reach the question of the trade mark’s well-known status.

Rule 3 Filings by business partners

If the brand owner’s trade mark has been registered by its business agent or representative, the mark can be opposed or invalidated under Article 15 of the Trademark Law, which specifically prohibits such applications.

Related court rules also note that even applications by relatives of a given agent or representative will be classed as malicious collusion.

Further, and if an applicant is aware of the existence of the prior unregistered trade mark due to contractual or business relationship or “other relationship” with the true owner of the mark, such applications for marks for use on identical or similar goods/services shall be rejected. Again, under corresponding court rules, “other relationship” refers to the following circumstances:

• The registrant is a relative of the prior user of the trade mark;
• The registrant was the employee of the prior user;
• The registrant’s business address is close to that of the prior user; and/or
• The registrant and the prior user had discussions on the agent or representative, but failed to conclude an agreement.

Rule 4 Filings harming another’s prior right

Article 32 of the Trademark Law dictates that trade mark filings shall not harm the existing prior rights of others, meaning copyright, design and trade name rights.

It is prohibited to register trade marks of others that enjoy a certain degree of popularity by “improper means”. Under the court rule, “improper means” also refers to the circumstance in which the registrant knows or should have known of the trade mark.

Tip: Register your device mark as a copyright work to obtain a Chinese certificate of copyright registration. That document can form the basis of oppositions or invalidation on any goods/services and in any classes.

Rule 5 Filings by deception or improper means

Article 44: Registration by deception or improper means shall be invalidated. Deception refers to filing false documents. Under the court rules, “Improper means” refers to the circumstances of disrupting the order of trade mark registration, damaging public interests, improperly occupying public resources, or seeking improper benefits.

“Violations of the principle of good faith, public order and good customs” is the ground most often cited by examiners against bad faith filings.

Tip: In oppositions or invalidations, try to prove their “Violations of the principle of good faith”. In that regard, you can submit evidence of their trade marks which copy or imitate the trade marks, trade names, trade dress, designs, logos of other people or yours.

Multiple applications for trade marks that copy or imitate different trade marks of the true brand owner and others will also be considered to be “Violations of the principle of good faith”.

Administrative measures against bad faith filings

1 Black list of CNIPA

CNIPA has black list of bad faith filers. Based on the list, they refuse the applications of such filers.

Tip: You may request CNIPA to add the pirate’s name to the black list.

2 AMR Penalties

The Administration for Market Regulations (AMR) are intended to punish bad faith filers, including by issuing them warnings against their conduct, and imposing fines of up to CNY30,000. They can also be listed in the List of Dishonesty and entered into the publicly-accessible National Enterprise Credit Information Publicity System (NECIPS).

Parties in the List will be affected when AMR reviews their license and qualification and such entities will be excluded from government project and bidding.

Tip: You may request AMR for their punishment.

3 Consequences for trade mark agents of bad faith filers

The AMR can also punish trade mark agents handling bad faith filings, ordering them to make corrections, issuing them with formal warnings, imposing fines of up to CNY100,000 (€12,000), and/or halting their services.

The responsible person shall be warned and given a fine of up to CNY50,000 or given criminal sanctions.

The agent will be entered into the List of Dishonesty and identified to the public through NECIPS. Agents in the List will be affected when AMR review their licence and qualification and will be excluded from government project and bidding.

4 IP credit

Under CNIPA Regulations on IP Credit, bad faith filers and their agents are listed as “dishonest” and identified to the public through NECIPS. They will be affected when they apply for financial funds and IP preferential fees.

Judicial measures against bad faith filings

In 2021, first and second instance courts in Fujian Province issued a judgment in respect of bad faith trade mark filings based on the PRC’s Anti-unfair Competition Law. These were the first judgments in China where the courts determined that bad faith filing actually constitutes a form of unfair competition.

In that case, a Chinese trade mark pirate had registered 48 trade marks in 14 classes that were identical with or similar to the trade marks of Emerson Electric Co. (US).

Emerson spent many years and substantial cost in oppositions and invalidations against the piracy, but failed, finally initiating an unfair competition lawsuit.

The courts accepted Emerson’s claim, determining that trade mark piracy is a form of unfair competition and ordered the hijackers to halt their efforts to register Emerson’s trade marks, publish an apology and pay Emerson damages of CNY1.6 million.

Importantly, the principle of this case was referenced in a recent draft of the revision of Trademark Law.

Tip: The benefit of a lawsuit is that you can claim compensation of cost for oppositions, invalidations and all related costs, something not possible in the context of oppositions and invalidations before the TMO/TRAD.

Revision of the Trademark Law

The draft of the revision was released in January 2023 for public comments, though it is not yet finalised. One of the key focuses of the revision was to restrain bad faith filings. Provisions in the draft law relating to bad-faith filings include:

Bad faith filings are subject to penalties, including fines of up to CNY250,000 and confiscation of illegal gains.

The prior right owners may request the trade mark hijackers to transfer the trade marks to them.  

If damages are caused to the prior right owners, they could sue the hijackers for compensation of damages, including the cost of oppositions, invalidations and litigations.

If the hijackers sue the prior right owners, the court will punish the hijackers and order them to compensate the damages.

Yunze LIAN is founder of Jadong IP Law Firm and a member of the MARQUES China Team

Two new episodes of the Talking MARQUES podcast are now available, featuring members of the MARQUES Intellectual Asset Management (IAM) Team discussing brand valuation.

The podcasts feature Bill Budd, Group Legal and IP Director at Virgin Group in the UK, and Sergio Ellmann, a partner of Marval O’Farrell & Mairal in Argentina.

In the first episode (number 26 in the Talking MARQUES series), they explore what brand valuation is, the difference between valuation and evaluation, and some of the challenges that brand owners face.

In the second episode (number 27), they look at developing issues including ISO standards, some examples of how brand valuation is used in practice and tips for brand owners who want to understand valuation better.

Brand valuation is one of the topics that the IAM Team focuses on. The Team’s remit covers raising the profile and awareness of brands as valuable business assets and providing guidelines for best practice in the creation, management and commercialisation of those assets.

You can listen to the podcasts on the MARQUES website here or on Spotify. It is recommended to listen to the two episodes in sequence.

You can also still listen to all previous episodes of Talking MARQUES.

The next episode of Talking MARQUES will be available later in September, and will look at misleading invoices and payment requests.

The EU Intellectual Property Network (EUIPN) website has been given a fresh look with new features.

Improvements include a redesign of the European Cooperation Projects page, in line with the EUIPO’s Strategic Plan SP2030 goals; updates to the Tools and Practices sections; a new free text search for news; and clearer, more accessible presentation.

The old and new websites will run in parallel for a limited time.

The new EUIPN website is here and more information about the changes is here. EUIPO states:

In response to user feedback, the News and Events pages have been merged into a single section, making it easier to stay up to date. One of the standout features is the new free text search function for news. Users have previously expressed a need to search for news related to their specific countries, and this update now allows them to easily find news articles relevant to their interests. In addition, the News & Events section has been improved with new filters, making it easier than ever to navigate and find updates that are important for the user.

The EUIPN website includes information on European Cooperation Projects, tools (such as TMview, Designview, TMclass and Designclass), EU Common Practices in trade marks and designs, learning programmes and upcoming events.

The picture shows part of the EUIPN homepage.

The WIPO Arbitration and Mediation Center (AMC) and the European Branch of the Chartered Institute of Arbitrators (Ciarb) are hosting a conference on 30 September 2025 titled "Protecting Value and Promoting Growth: Mediation and Arbitration for Fashion and Luxury Disputes".

The event starts at 10:00 and finishes at 17:00 CET. It is taking place in Geneva and it is possible to join in person or remotely.

MARQUES has joined the event as a supporting organization.

MARQUES members can therefore benefit from discounted fees: €450 for in-person attendance or €50 for virtual attendance. (The standard fees are €550 and €75 respectively.)

There is also an early bird rate for in-person attendance of €400, which expires on 8 September.

Speakers will include WIPO mediators and arbitrators, in-house and external legal counsel and representatives of the WIPO Arbitration and Mediation Center. There will be opportunities to ask questions and take part in discussion.

In-person attendance includes lunch and a post-conference reception.

You can find out more and reserve your place on the WIPO website here.

The event aims to promote the understanding of how arbitration and mediation can be optimised to serve the unique needs of the fashion and luxury sectors.

“It will feature a keynote speech, an introductory lecture on recent trends and issues in the sector, and interactive sessions illustrating concrete arbitration, mediation, and procedural aspects,” according to the website.

MARQUES is hosting seven workshops during the Annual Conference to enable delegates to discuss topical IP issues in small groups.

Each workshop will be repeated so delegates can attend up to two. The workshops last about 1.5 hours.

One workshop, presented by the MARQUES International Trade Mark Law and Practice Team, focuses on the Madrid Protocol and North America.

MARQUES is very pleased to welcome two guest speakers for this webinar: Mesmin Pierre, Director General, Trademarks and Industrial Designs Branch, Canadian Intellectual Property Office; and Debbie Roenning, Director, Madrid Legal Division, Madrid Registry, WIPO, Switzerland.

They will be joined by members of the ITMLP Team to discuss international trade mark strategies.

Other workshops that are not yet fully booked include Geographical Intelligence (presented by the MARQUES GI Team) and Shaping a sustainable future (presented by the MARQUES Regulatory Team).

If you have registered for the Annual Conference and not yet booked your workshop/excursion you can do so on the MARQUES website or by contacting the secretariat.

The Annual Conference takes place in The Hague, The Netherlands, from 16 to 19 September. Representatives from 82 countries have already booked, but there are still a few places available if you would like to attend and have not yet registered.

eMadrid (beta) will be the default environment for managing international trade mark registration transactions from September, WIPO has announced.

The Organization is encouraging all Madrid System users to start using eMadrid (beta) now. It also highlights that eMadrid (beta) is real and it will process any requests submitted.

As reported on the Class 46 blog in May, the new eMadrid includes an integrated workbench, collaboration features, real-time updates and prompts and built-in guidance.

As part of the transition to eMadrid, Madrid Portfolio Manager will be phased out. Access to registration and renewal certificates has already been disabled.

Almost 20% of active international trade mark registrations are already being managed through the platform, including about 76% of the largest portfolios.

Based on feedback received so far, WIPO says it has added features including the ability to: download certificates from the Certified documents tab on the details page of any international registration in your workbench; access pending international trade mark applications and download irregularity letters under the Transactions tab; and quickly check the latest transactions.

eMadrid (beta) is currently available in English. French and Spanish interfaces are due to be added soon.

Users can provide feedback to WIPO on eMadrid (beta) via “Contact us” in the Help menu.

Class 46 readers may be interested to read the Boards of Appeal case-law research reports, which are available on EUIPO’s website here.

The reports result from discussions within the Consistency Circles and the General Consistency Meeting of the Boards of Appeal and reflect the views at the given date. They are working documents and should not be considered to have any binding effect on the Boards of Appeal.

All have been published since 2021.

There are eight reports on absolute grounds – the most recent of which covers “Descriptiveness of names of colours” – and 12 reports on relative grounds, with “The impact of animal depictions on the comparison of signs and the likelihood of confusion” being published in May this year.

There are also seven reports on designs, covering topics such as component parts of complex products, assessment of individual character, designer’s degree of freedom and the informed user.

Finally, there is one report under the heading “Procedure and Registry”, which covers res judicata.

Most of the reports are available in the five languages of EUIPO.