Proving bad faith in trade mark dispute
(Author: Dr. Jian Xu, the China IP Blogger)
During trade mark opposition or cancellation proceeding in China, it is often necessary to prove bad faith of the other party. This is especially the case for trade mark piracy cases which are common in China. The China Trademark Office has provided a guideline list of evidence for collecting information relating to bad faith.
To decide whether the proprietor of the disputed trade mark has bad faith, the following factors can be considered:
- The proprietor and the opponent have had trading relations or other forms of collaboration in the past.
- The proprietor and the opponent reside in the same location, or the goods/services of both parties have the same sales/distribution channel and territory.
- There were disputes between the proprietor and the opponent before, especially in connection with the trade mark.
- The internal staff of the proprietor and the opponent have relationships.
- The proprietor’s aim is to make unethical/illegal gains from the trade mark, such as inappropriate and misleading promotion, taking advantage of the reputation of the opponent, threatening the opponent to form trading relationships, asking for unrealistically high amount of trade mark assignment fees, license fees or damages, etc.
- The opponent’s mark has great originality.
- Other situations where the bad faith can be established.