Legal Research On Regulating Preemptive Registration Of The Translation Of A Trademark In A Foreign Language In Bad Faith

Many cases related to trademark preemptive registration in bad faith in China involve preemptive registration of translation of trademark in a foreign language.According to abundant decisions of cases related to preemptive registration of translation of trademark in a foreign language,the Trademark Review and Adjudication Board and different courts hold different opinion on how to determine a translation corresponding to a certain trademark in a foreign language and how to judge a trademark registration was filed in bad faith.From the procedural aspect,procedures to declare a mark invalid or cancel a trademark are complicated and tedious in China,and the Trademark Office doesn’t put emphasis on the applicant’s bona fide intention to use the mark.Based on the situation of preemptively registering translation of trademark in a foreign language in bad faith,this thesis analyzes the feature of such preemptive registration and states the necessities to regulate such action.According to the current legal regulation on trademark preemptive registration filed in bad faith in China and other countries,this thesis focuses on relevant disputes and puts forward some feasible proposals to improve the legal regulation of prohibiting preemptive registration of the translation of trademark in a foreign language filed in bad faith.As regard to the structure of the whole thesis,this thesis is divided into threeparts:Chapter Ⅰ is an analysis of present situation on preemptively registering the translation of trademark in a foreign language in bad faith.First of all,Chapter I concludes the definition of the translation of trademark in a foreign language by analyzing its intension and extension.According to the status of translation of a trademark in a foreign language used by the owner,this thesis makes a classification on different types of translation of trademarks in foreign languages.In particular,this thesis states that the translation of trademark in a foreign language will fall into the field of “trademark nickname” if the owner of the trademark in a foreign language doesn’t actively use the translation,but relevant public believe that the translation identifies the same source as the trademark in a foreign language after abundant use by public and media.Secondly,based on the aim and principle of the trademark law,and the specialty of preemptively registration of translation of trademark in a foreign language under the integration of global economic,this thesis discusses about specific necessities to regulate preemptively registration of translation of a trademark in a foreign language.Thirdly,this thesis concludes three main issues among many cases related to preemptively registering translation of a trademark in a foreign language filed in bad faith,including:(1)how to determine the correspondence between the translation and the trademark in a foreign language,which is the special issue in trademark preemptive registration of translation of trademark in a foreign language filed in bad faith.After collecting and analyzing all cases involving trademark preemptive registration of translation of a trademark in a foreign language,the author found that the main issue thereof under current judicial practice is the required extent of corresponding relationship between the translation and the trademark in a foreign language.In some cases,courts held that the trademark in dispute should be the sole translation of the cited trademark in a foreign language;some opinions stated the correspondence did exist when the translation had certain connection with the trademark in a foreign language;while other opinions believed that the translation is a similar trademark of the trademark in a foreign language when their corresponding relationship is stabilized;(2)how to judge a trademark application for registration isfiled in bad faith.Currently,the standard of bad faith is incongruent,including the standard of knowing and the “know or should know” standard;and(3)some translations of trademarks in foreign languages are not initially used by owners of trademarks in foreign languages,but the translations identities the same source as the trademarks in foreign languages after the trademark use of public and media.However,it is impossible to adopt the passive use theory in China due to requirement of commercial use of trademark,therefore,it is difficult to protect such translations from preemptive registration due to the.Chapter Ⅱ is a detailed legal analysis for three main issues in regulating preemptive registration of translation of a trademark in a foreign language.First,this chapter concludes that protecting the translation of trademark in a foreign language from preemptive registration is actually a protection on the trademark in a foreign language,and the relationship between the translation and the trademark in a foreign language is a critical issue in determining whether the translation is similar to the trademark in a foreign language.The suggestion is to determine whether a translation is similar to a trademark in a foreign language according to the stable corresponding relationship between the translation and the trademark in a foreign language.Secondly,based on the domestic and foreign judicial practice including China,America,Europe,Japan and Korea,this thesis concludes that the “know or should know” standard is more reasonable and feasible than the standard of knowing,which is conducive to regulate trademark preemptive registration.Meanwhile,since the determination of bad faith is pretty subjective,this thesis lists several considerations as the presumption of bad faith as follows:(1)geographical locations of the applicant of trademark registration and owner of trademark in a foreign language;(2)certain relationship such as agency relationship between the applicant and the owner;(3)popularity and reputation of the translation and the trademark in a foreign language;and(4)whether the applicant hold and store a lot of different trademarks or utilize these trademark to sue others for unjustified benefits.If the applicant of trademark registration satisfies one of above considerations,it is reasonable to infer that the trademark registration is filed in bad faith.In themeantime,the applicant shall take the burden of proof to prove the application for trademark registration is field in bona fide.As regards to the last issue,this thesis introduces the public use rule in America and holds that it is feasible to use the trademark public use rule to prohibit others from preemptively registering a translation of a trademark in a foreign language derived from public or media use.Chapter Ⅲ provides some reasonable recommendations to improve the regulation on trademark rush registration of translation of foreign marks based on multiple issues in Chinese judicial practices and experience in foreign precedents respectively from substantive perspective and procedural law.Suggestions on the substantive perspective include(1)clarifying that the stabilized corresponding relationship between the translation and trademark in a foreign language shall be the standard to determine whether the translation is similar to the trademark in a foreign language;(2)strengthening the determination of bad faith;and(3)weakening the requirement on active use in trademark cancelation and invalidation for translation as a trademark nickname.With respect to the procedural law aspect,recommendations involved in this thesis include(1)requiring the applicant to submit bona fide declarations and evidence of trademark use in trademark application,and review the translation of a trademark;(2)applying Article 7 and 32 of Trademark Law to dismiss claims from the trademark squatter in the case of malicious trademark infringement litigation;and(3)conducting penalties measures on malicious prosecution raised by the trademark squatter in bad faith.