Application of Paragraph 44.1 of the Trademark Law - Determination of Malicious Registration in the Case of Small Number of Copied Marks

Introduction

Article 44.1 of the Trademark Law stipulates that “obtaining registration by other improper means” is an miscellaneous provision, and the specific conditions and factual basis for its application are not very clear. In recent years, with the combating against malicious registration of the National Intellectual Property Administration increased, in the case of trademark authorization and right confirmation, the provision is applied more and more. Based on this, the author analyzes the recent invalidation decisions made by the National Intellectual Property Administration, and discusses with the readers the considerations for the application of this provision in practice, when the number of copied trademarks is small. 

Case Description

Zhong So-and-so, a natural person, filed an application for registration of the trademark “turnitin svip” on September 28, 2020, designating goods of Class 9 “computer game software downloadable through global computer networks and wireless devices; downloadable computer applications; recorded computer programs; Internet servers; computer games downloadable through the Internet; computer Internet servers; digital music downloadable from the internet; computer programs (downloadable software); downloadable video files; downloadable cell phone applications”, Trademark No. 50119521. This trademark was registered on June 7, 2021. 

Turnitin, LLC filed an application for invalidation of the trademark No. 50119521 “turnitin svip”, arguing that the registration of the disputed trademark constitutes a bad faith copying and imitation of Turnitin’s prior trademark “TURNITIN”, which disturbed the normal order of trademark registration and violated the provisions of Paragraph 1 of Article 44 of the Trademark Law, and should be declared invalid. 

Recently, the National Intellectual Property Administration of the Trademark Law made a decision on the invalidation of the trademark No. 50119521 “turnitin svip”, and ruled that the disputed trademark should be invalidated. The reasons for the judgment are mainly based on the following two points: 

1.The evidence submitted by the applicant showed that the applicant’s trademark “TURNITIN” had been used in the thesis plagiarism detection and other related goods before the application date of the disputed trademark, and had already had a certain degree of popularity. Considering the strong originality of the Applicant’s trademark “TURNITIN”, it is not a coincidence that the disputed trademark includes the Applicant’s trademark “TURNITIN” entirely. 

2. The respondent has registered several trademarks of “TURNITIN SVIP” in class 9, 35, 38, 41 and 42 for goods and services about the Applicant’s well-known “TURNITIN” trademark. At the same time, the respondent also registered the trademark “CPCIEISVIP”, which imitates other well-known literature search systems. Although the respondent applied for registration of only 8 trademarks, almost all of them were copies or imitations of others’ well-known trademarks with strong originality in specific fields. The above behavior of the respondent violated the principle of honesty and good faith, disturbed the normal order of trademark registration management, and undermined the market order of fair competition. 

Case Analysis

Paragraph 1 of Article 44 of the current Trademark Law provides that “Where a registered trademark violates the provisions of Article 4, Article 10, Article 11, Article 12 or Paragraph 4 of Article 19 of this Law, or where the registration was obtained by deception or other improper means, the Trademark Office shall declare the registered trademark invalid; and other units or individuals may request the Trademark Review and Adjudication Board to declare the registered trademark is invalid.” Among them, provisions of “obtaining registration by deceptive means or other improper means”, is in fact, the miscellaneous restrictive provisions in addition to “violation of the provisions of Article 4, Article 10, Article 11, Article 12, paragraph 4 of Article 19”. 

The provision of “obtaining registration by deception or other improper means” first appeared in 1993 in the Trademark Law, Article 27, paragraph 1, was initially set up for the protection from “damage of specific civil rights and interests”. With the change of social environment and the adjustment of judicial practice, this provision has been adjusted to combating malicious registration and safeguarding public interests. In recent years, in practice, the National Intellectual Property Administration has increased its efforts to combat malicious registrations, and has applied the provisions of Article 44(1) in many cases. 

Article 17.3 of the 2019 Guidelines for the Trial of Administrative Cases on Trademark Authorization and Right Confirmation of Trademark of the Beijing Municipal Higher People’s Court for the first time includes the determination of “other improper means”, including “the applicant of the disputed trademark has applied for the registration of a number of trademarks that are identical or similar to the trademarks of others that are distinctive or widely known, including applying for registration of the trademarks of different trademark owners on the same or similar goods or services, and also applying for registration of the trademarks of the same trademark owner on non-identical or non-similar goods or services”. Article 3.2.2 of Chapter 16 of the Trademark Examination and Trial Guidelines, which was implemented on January 1, 2022, stipulates that the circumstances of “obtaining registration by other improper means” include “where the applicant for the disputed trademark applies for registration of several trademarks, which are identical or similar to the trademarks of others with a certain degree of familiarity or strong distinctive features”. We can see that the above provisions for the determination of “improper means” are expressed as “apply for registration of multiple trademarks”, but did not make specific quantitative provisions. 

Generally speaking, if the trademark applicant copies or imitates other prior trademarks of high reputation and the number reaches dozens, or even hundreds, then in practice, often can be directly recognized as constitute “obtaining registration improper means”. However, if the number of malicious registrations is relatively small, how many trademarks can be recognized as constituting “obtaining registration by other improper means” by the trademark applicant? How will the number of malicious registrations be considered in the application of Article 44(1) of the Trademark Law? 

Specifically in this case, Zhong So-and-so only applied for the registration of 8 trademarks. Although the number is small, the National Intellectual Property Administration still recognized that constitute “obtaining registration by improper means”. From the content of the invalidation decision, the author summarized three key factors: 

1. The popularity and distinctiveness of the copied trademark. 

The National Intellectual Property Administration, based on the evidence of use submitted by Turnitin, LLC, the applicant for invalidation, firstly recognized that the prior trademark “TURNITIN” has a certain degree of popularity and originality.

2. The subjective intent of the trademark applicant. 

In terms of subjective intent, the National Intellectual Property Administration held that “it is no coincidence that the disputed trademark contains the applicant’s trademark ‘TURNITIN’ entirely”; in addition, although the number of Zhong’s trademarks is relatively small, all trademarks are copied from other well-known trademarks.

3. Other malicious circumstances. 

The National Intellectual Property Administration in the judgement also emphasized that “all are copies of others in a specific field of trademark”, that is to say, Zhong’s business field of copying trademark is very concentrated, which reflects the malice of Zhong is obvious, intentionally disrupting the management order of trademark registration. 

Therefore, the number of trademark applicant copying and application of prior trademarks is not the decisive factor of official determination of “obtaining registration by improper means”. In specific cases, it is necessary to consider the popularity and distinctiveness of the copied trademark, the subjective malice of the trademark registrant, as well as other factual circumstances that assist in determining the malice, and the number of trademarks copied by the applicant is the “last straw that breaks the camel’s back”. In considering whether to constitute “obtaining registration improper means”, the National Intellectual Property Administration sorts out whether the trademark applicant’s application for registration is bona fide and justified, and whether it will have a negative impact on the trademark registration order, management order and commercial market order in the specific facts and evidence of individual cases.

In summary, the author believes that the invalidation of the trademark No. 50119521 “turnitin svip” fully embodies the application of the National Intellectual Property Administration’s judgment standard for “obtaining registration by other improper means” in the current Trademark Law, Article 44(1). And it is of high reference significance and guideline value for the subsequent cases of opposition and invalidation against the trademark applicant who has copied a relatively small number of trademarks but with obvious malicious intent.