Post-application evidence of bad faith in China’s Trade Mark Law

Abstract

The author

• Jyh-An Lee is an Associate Professor in the Faculty of Law at the Chinese University of Hong Kong. Hui Huang is a Guest Research Fellow at the Intellectual Property Center of the China Social Science Academy and a Senior Partner of Wanhuida Peksung IP Group.

This article

• In many jurisdictions, bad faith has become an essential argument against trade marks registered by squatters. However, determining what constitutes bad faith remains challenging for most trade mark practitioners.

• The Chinese courts used to opine that only evidence existing before or upon application for a trade mark could be used to establish bad faith. In other words, evidence which appeared after the deemed date could not be used for this purpose. However, recent court decisions have begun to take this evidence into consideration.

• The experience of domain name dispute resolution and the case law in the EU and USA demonstrate that post-application evidence is occasionally helpful or necessary to determine bad faith registration. Currently, post-application (or post-filing) evidence is considered by the Chinese courts together with ex ante evidence (knowledge of the mark at the time of the application for registration). We argue that this approach is reasonable from a practical and comparative law perspective.