Understanding and Application of Article 44.1 of the Trademark Law

Article 44 (1) of the Trademark Law provides that:

Where a registered trademark stands in violation of the provisions of Article 10, 11 or 12 of this Law, or the registration of a trademark has been acquired by fraud or any other unfair means, the Trademark Office shall declare the registered trademark invalid; any other organization or individual may request the Trademark Review and Adjudication Board to declare such a registered trademark invalid. 

1. "Registration obtained by unfair means" includes activities of preempt trademark registrations of massive amounts or multiple times even not for use.

"Other unfair means" refer to any means, other than fraud, which disturb the order of trademark registration, harm the public interests, improperly occupy public resources, or seek unjust benefits through other manners. For example, to obviously replicate, plagiarize high-profile trademarks of others; for the purpose of hoarding trademarks first and seeking commercial interests through assignment and alike, to file a large number of applications for registration for high-profile trademarks of others.

At present, trademark review and judicial practices both indicate that activities of preempt trademark registrations of massive amounts or multiple times even not for use should be seen as activities of disturbing the order of trademark registration, where Article 44.1 of the Trademark Law should be applied to regulate it, this approach is also of great significance to a strong fight against malicious preempt registrations.

Reference Case 1: Registration of Trademark "Miu Miu", No. 10300709 (December 2015)

Reference Case 2: Administrative Lawsuit on the Trademark Review Case of Registration of Trademark “facebook” (No. 9081730), (2016) JingXingZhong No.475. (April 25, 2016)

2. "Unfair means" refer not only to the unfairness of the means of registration, but also to the impropriety of the purpose of registration, namely, malicious registration

Reference Case: Administrative Ruling of Supreme People's Court, (2015) ZhiXingZi No. 335

The Court held that “unfair means" under the Trademark Law mainly refer to the unfairness of the means of the registration rather than the impropriety of purpose of registration, and the application of Article 44.1 does not require the consideration of whether the use of the disputed trademark will cause the confusion of the relevant public. Therefore, this Article does not apply to the present case. It’s obviously an erroneous application. "Other unfair means", including malicious registration, should be applied to the case. Jordan Company maliciously registered the trademark through means of unfair competition, the disputed trademark should be revoked.

3. This Article applies equally to the "pending trademark" under opposition proceedings

Although Article 44 (1) of the Trademark Law regulates "registered trademarks", in practice, it is also applicable to "pending trademark" under opposition proceedings.

Reference Case 1: Trademark Review on the Opposition of Trademark “PPR” (No. 9288375) (Dec. 2015)

The Trademark Review and Adjudication Board held that: according to the natural interpretation of law[1], if violates the above provisions of the law, a registered trademark can be withdrawn from its registration; for a trademark application, which is under the opposition proceedings and has not yet been registered, its registration should not be approved.

From the above rulings and judgments, it can be seen that Article 44.1 of the Trademark Law is the legal basis for against malicious registration in trademark review and judicial practices.

[1] where a judge wants to incriminate an act that was not provided so, he might illustrate some acts punished but in nature were not so serious as the present one; and, where he wants to decriminalize an act, he might illustrate some acts that were not punished as a crime but in nature by far serious than the present one.