Recently, there have been frequent news of enterprises' bulk applications for trademarks being rejected, such as an enterprise management group company in Zhejiang applying for a large number of trademarks in multiple categories in a short period of time; an artwork company in Shenzhen submitting 381 applications for trademark registration in a short period of three months, designating the use of the trademarks in multiple categories, and so on.

Although the malicious hoarding behavior does exist, but there are also many enterprises are really to protect their own brand, not maliciously. Even if the trademark has not been put into actual use at this stage, it is true that in order to cope with future business needs and apply for "defensive trademarks" or "reserve trademarks" with a legitimate purpose, a clear intention to use, and does not have a "bad faith". It does not have "bad faith". Then, when the enterprise receives the trademark application for suspected violation of the Trademark Law, Article 4, paragraph 1, constitutes "not for the purpose of use of the trademark registration application in bad faith" of the examination of the opinion, how to actively and effectively respond to protect their legitimate rights and interests?

According to Chapter 2 of the Guidelines for Trademark Examination and Trial on "Examination and Trial of Bad Faith Trademark Registration Applications Not for the Purpose of Use", the act of applying for trademark registration "not for the purpose of use" refers to the act of the applicant applying for registration of a trademark without the purpose of using the trademark or preparing to use the trademark, or without the possibility of actual use of the trademark based on reasonable inference. The "Application for Trademark Registration without the Purpose of Use" means that the applicant has neither the purpose of actually using the trademark nor the behavior of preparing to use the trademark, or there is no possibility of actually using the trademark based on reasonable inference. The legislative purpose of Article 4 of the Trademark Law is to curb malicious applications such as trademark hoarding, which unduly occupy trademark resources and disrupt the order of trademark registration, without the intention of filing a large number of applications for trademarks for the purpose of using them, and with the intention of making profits therefrom, that is, "malice" which is "not for the purpose of use" and which is the subject of this provision. The exceptions to this provision are:

Article 4 of the Trademark Law shall not apply in the following cases: 

(1) The applicant files an application for a trademark that is identical or similar to its trademark registration for defensive purposes.

(2) An applicant files a trademark application in advance for a future business with realistic expectations.

The above exceptions point to two situations, one for defensive trademarks and the other for reserve trademarks. Therefore, in general, we should first see if there are any similar prior trademarks, and explain to the direction of series trademarks and defensive protective trademarks. If not, see if you can provide creative instructions, project documents and other materials to prove that there is an intention to use or apply for registration as a reserve trademark. 

Specifically, 

For defensive trademarks: evidence of registration of the principal trademark, evidence of actual use, evidence of popularity of the defensive trademark, evidence of the registrant's actions against the principal trademark, and reasons for the necessity of choosing the defensive trademark can be submitted.

For reserve trademarks: For core classes with a high degree of relevance, evidence of a project plan and preparations for implementation of future business with realistic expectations regarding reserve trademarks can be submitted to show that there is a real intention to use the trademarks and that actual preparations have been made to carry out the relevant business. In the case of an extended category, the necessity of expansion can be demonstrated by stating the relevance of the extended category to the business.

This year, China has continued its efforts to combat malpractice in trademark registration, as evidenced by the Notice on the Continued Crackdown on Malpractice in Trademark Registration issued by the CNIPA. The government has adopted a firm "zero tolerance" stance in order to clamp down on such malpractice. Enterprises that have high demand for trademark registration should create a strategic plan for timely trademark applications. They must determine the appropriate time for submission, the specific trademarks, and the number of submissions to avoid "excessive defence" or "excessive reserve", which could result in being accused of bad faith trademark hoarding.