In recent years, with the continuous growth of trademark applications and registrations in China, trademark registration has gradually become a prominent issue. In the first half of 2023 alone, the Trademark Office cracked down on 249000 malicious trademark registrations, of which 192000 were not authorized in trademark registration applications, objections, and other authorization processes, accounting for 77.1%. How to identify trademark registration, regulate trademark registration, balance the rights between different subjects, and correctly define the boundaries of rights have become hot topics of legislative and judicial attention. Coinciding with the annual "4.26 World Intellectual Property Day", courts across the country have successively released typical cases of intellectual property protection in 2023. Among them, cases of regulating trademark registration have been selected, reflecting the exploration and attempts of local courts to stop trademark registration and purify the market competition environment in response to the aforementioned hot topics and concerns.

1、 The concept of trademark registration and types of unfair competition

In the context of the Trademark Law, the term "preemptive registration" itself includes negative and derogatory evaluations, which means that the perpetrator usually has obvious subjective malice. In other words, the subjective malice of the perpetrator is also one of the factors in determining whether it constitutes preemptive betting. Therefore, the trademark registration behavior that needs to be regulated by law only includes malicious registration behavior for the purpose of attaching good reputation to others and seizing unfair competitive benefits, and does not include "good faith registration" in the case of pure goodwill by the actor.

Generally speaking, trademark registration can be broadly or narrowly defined. Broadly speaking, trademark registration rush refers to the act of an applicant for trademark registration using the object of rights obtained or enjoyed by others in accordance with the law as a trademark application without permission. These rights include trademark rights, copyright, design patent rights, name rights, portrait rights, etc. Narrowly defined trademark registration refers to the act of a trademark applicant applying for trademark registration of their commercial identification, such as unregistered trademarks, domain names, trade names, etc., without the prior permission of the user of the commercial identification.

As mentioned earlier, the actor did not simply register the trademark for the purpose of grabbing unfair competition benefits. The unfair competition behavior constituted by trademark registration includes but is not limited to:

1. Rushing to register a trademark and engaging in market operations using the registered trademark can easily lead to confusion among the relevant public;

2. Rushing to register a trademark and engaging in false advertising;

3. Rushing to register a trademark and carrying out administrative complaints and reports, filing civil lawsuits, initiating administrative authorization and confirmation procedures (objection, invalidity, revocation, etc.), sending lawyer's letters, etc., with the intention of prohibiting the true owner of the registered trademark from using their own trademark or commercial logo;

4. Rushing to register a trademark and selling it at a high price;

5. Continuously and extensively applying for trademarks from others, in order to hoard trademarks and prepare for the aforementioned actions.

2、 The advantages and feasibility of applying the Anti Unfair Competition Law to regulate trademark registration

The fundamental reason for applying the Anti Unfair Competition Law to regulate trademark registration behavior is the limitations of the Trademark Law in regulating related behaviors. Firstly, registrants often rush to register a large number of trademarks and initiate procedures such as objection, invalidation declaration, and revocation within the framework of the Trademark Law to stop the rush to register trademarks. This process can only be initiated for one trademark at a time, which often puts the rights holder in a quagmire and incurs additional time and financial costs. Secondly, trademark registration is not a type of trademark infringement as stipulated in Article 57 of the Trademark Law, and there are difficulties in legal application. For example, in the case (2020) Jing 0102 Min Chu 2355, the People's Court of Xicheng District, Beijing, determined that the trademark application for registration was not a trademark use behavior regulated by the Trademark Law, and therefore the defendant's trademark registration act did not constitute trademark infringement, thus rejecting all the plaintiff's litigation requests.

On the contrary, the advantages of applying the Anti Unfair Competition Law to regulate trademark registration are imminent. Firstly, from the current judicial practice, applying the Anti Unfair Competition Law to regulate trademark registration behavior can prohibit registrants from applying for registration of trademarks that are the same or similar to the rights trademark at once, similar to a ban on registrants. Combined with the draft of the Trademark Law Amendment in the solicitation of opinions, the mandatory transfer system designed can even achieve the purpose of forcibly transferring registered registered registered trademarks after winning the lawsuit. Secondly, after registering a trademark, the registrant will inevitably engage in false advertising, confusing behavior, complaints, reports, or lawsuits, which can fall within the scope of specific provisions on unfair competition in the Anti Unfair Competition Law. To put it further, there can also be Article 2 of the Anti Unfair Competition Law, which provides a general clause as a cover.

3、 The History and Current Situation of Courts Applying the Anti Unfair Competition Law to Regulate Trademark Registration

Overall, the court's application of the Anti Unfair Competition Law to regulate trademark registration has gone through a process of "from scratch", "from legal principles to principle clauses and then to specific clauses", "from prohibiting trademark registration to ordering the perpetrator to compensate for losses".

（1） Legal application: from scratch

The initial way in which the court regulated trademark registration was mainly to apply the principles of good faith or prohibition of abuse of rights, and to reject the civil infringement lawsuit filed by the registrant. In the (2014) Min Ti Zi No. 24 [Guiding Case No. 82] case, the Supreme People's Court determined that the plaintiff Wang Suiyong's trademark "Gree Si" was obtained through preemptive registration, and the way of obtaining and exercising trademark rights was difficult to justify. Wang Suiyong's infringement lawsuit against Gree Si Company's legitimate use of trademark rights obtained in bad faith constituted abuse of rights, and ultimately revoked the first and second instance judgments, and changed the judgment to reject all of Wang Suiyong's litigation claims. In the (2022) Hu 73 Min Zhong 4 case, the Shanghai Intellectual Property Court also ruled to dismiss all the plaintiff's litigation claims on the grounds that the plaintiff's trademark was obtained through preemptive registration, their use of the trademark, and their actions in filing a lawsuit violated the principle of good faith.

Afterwards, the People's Court of Yuhang District in Hangzhou City attempted to use Article 2 "General Provisions" of the Anti Unfair Competition Law to protect the registered trademark in cases such as the (2017) Zhe 0110 Min Chu 18627 and the (2017) Hu 0112 Min Chu 26614. The Anti Unfair Competition Law became a powerful institutional tool to prevent trademark registration.

（2） Judgment basis: from legal principles to principle clauses and then to specific clauses

As mentioned earlier, local courts initially applied legal principles such as the principle of good faith or the prohibition of abuse of rights to regulate trademark registration.

Subsequently, courts in various regions began to explore the possibility of applying the Anti Unfair Competition Law to regulate trademark registration. In the case (2017) Zhe 0110 Min Chu 18627, the Yuhang District People's Court of Hangzhou City determined that the defendant violated the principle of good faith, damaged the legitimate rights and interests of others, disrupted the order of fair competition in the market, maliciously obtained and exercised trademark rights, and could be deemed as an act of unfair competition. The judgment was made in accordance with Article 2 "General Provisions" of the Anti Unfair Competition Law.

To this day, the trademark registration behavior of the perpetrator is increasingly combined with false advertising, confusing behavior, malicious complaints, reports, or lawsuits. Local courts are more inclined to refine unfair competition behavior and apply specific provisions of the Anti Unfair Competition Law. In the case (2023) Zhe 03 Min Chu No. 423, which was selected as one of the "Top 10 Intellectual Property Cases of Zhejiang Courts in 2023", the Wenzhou Intermediate People's Court determined that if the defendant maliciously registered a "wake-up word" that had a certain influence on others as a trademark, and used the trademark to send a "stop infringement" lawyer's letter, engage in confusion and false advertising, it constituted unfair competition, and the defendant was ordered to bear corresponding legal responsibilities under Articles 6 and 8 of the Anti Unfair Competition Law.

（3） Responsibility assumption: from simply prohibiting trademark registration to ordering the perpetrator to compensate for losses

In the early days, courts in various regions were usually more cautious and would only order the hijacker to stop the hijacking behavior. In the case (2017) Hu 0112 Min Chu 26614, the People's Court of Minhang District in Shanghai only ordered the defendant to stop the unfair competition of trademark registration, and did not specifically order the defendant to compensate the plaintiff for economic losses.

However, ordering the hijacker to stop the hijacking behavior is often not enough to compensate for the damage caused to the rights holder by the hijacking behavior. Therefore, nowadays, courts in various regions not only order the hijacker to stop the hijacking behavior, but also order the hijacker to compensate the rights holder for the losses. In the (2021) Suminzhong 2452 case [this case was selected into the "Top Ten Typical Cases of Judicial Protection of Intellectual Property Rights of Jiangsu Courts in 2023"], the Jiangsu Provincial High Court determined that "the sued infringer registered the well-known trademarks and works he used earlier as trademarks when cooperating with the obligee, and attacked the trademark owner in an all-round way by means of infringement of intellectual property litigation, complaints to administrative organs, industry associations, e-commerce platforms, improper registration of WeChat official account, commercial slander, rush registration and hoarding of trademarks. The subjective malice was obvious and the circumstances were serious, which constituted an unfair competition act of abuse of intellectual property rights", and ordered the rush registrant to compensate the obligee for economic losses of 3 million yuan. In the case (2021) Min Min Zhong 1129, the Fujian Provincial High People's Court not only ordered the defendant to stop applying for registration of a trademark that is the same or similar to the plaintiff's rights trademark, but also ordered the defendant to compensate the plaintiff with an economic loss of 1.6 million yuan.

4、 Response strategies for trademark registration by rights holders

（1） Strengthen trademark monitoring

Although the Anti Unfair Competition Law can be applied to regulate trademark registration, it is still necessary to nip the early signs of registration in the bud. The rights holder can strengthen daily trademark monitoring, and promptly raise objections, invalidation declarations, or revocation procedures in accordance with the provisions of the Trademark Law when discovering that their own commercial logo or prior rights have been preemptively registered by others.

（2） Active response and timely counterattack should be taken when accused of infringement

After the registrant successfully registers the trademark, it is likely to initiate trademark infringement and unfair competition lawsuits against the rights holder. At this point, the right holder can defend themselves by claiming that the registrant is a registered trademark, abuses their rights, and violates the principle of good faith, and request the court to reject the registrant's lawsuit request. In accordance with the provisions of the Supreme People's Court's Reply on the Issue of Defendants in Intellectual Property Infringement Litigation Requesting Compensation for Reasonable Expenses on the grounds of Plaintiff's Abuse of Rights, the registrant is requested to compensate the right holder for the reasonable legal fees, transportation expenses, accommodation expenses, and other expenses paid by the registrant in the litigation.

Regarding counterattack measures, the rights holder can request the court to impose judicial penalties on the abuse of rights by the registrant. In the "Changgao Dianxin" case, which was selected as one of the "Top Ten Typical Cases and Excellent Cases of Intellectual Property Judicial Protection in Hunan Courts (2023)", the Changsha Intermediate People's Court imposed a fine of 100000 yuan on the act of maliciously filing a trademark infringement lawsuit after the registration of a trademark by the registrant.

When necessary, the right holder may also file a counterclaim against the act of the registrant registering the trademark and maliciously filing an infringement lawsuit, requesting the court to order the registrant to bear the legal responsibility of stopping the infringement, compensating for losses, and eliminating the impact.

（3） Proactively filing unfair competition lawsuits

In the current judicial environment, the right holder can file an unfair competition lawsuit against the registrant for trademark registration, with little controversy. In addition to filing a lawsuit against the registrant, requesting the registrant to stop registering a trademark that is identical or similar to the rights trademark of the rights holder, and requesting the registrant to compensate for economic losses, the rights holder can also use the following "two tricks" to fully protect their legitimate rights. Firstly, the assignee and trademark agency of the registered trademark can be added as joint defendants. In the case (2021) Min Min Zhong 1129, the Fujian Provincial High People's Court determined that the trademark agency providing trademark registration agency services to the registrant and the registrant constituted joint infringement and required joint compensation of 1.6 million yuan to the plaintiff; In the case of unfair competition dispute between a company in Nanjing and a technology company in Xi'an and a company in Xi'an, the Shaanxi Provincial High People's Court found that the transferee of the registered trademark also constitutes unfair competition.

Secondly, in the lawsuit for compensation for losses, the registrant can be requested to compensate for the reasonable expenses incurred to stop the trademark registration act. In the case (2023) Zhe 03 Min Chu No. 423, which was selected as one of the "Top 10 Intellectual Property Cases of Zhejiang Courts in 2023", the Wenzhou Intermediate People's Court determined that the expenses incurred by the infringed party in trademark application, administrative invalidation, and judicial proceedings due to trademark registration were losses caused by unfair competition and should be considered as a factor in determining the amount of compensation.

5、 Conclusion

The act of trademark registration undermines the construction of a healthy market environment and the cultivation of a fair and orderly competitive order. The application of the Anti Unfair Competition Law to severely crack down on illegal acts of trademark registration responds to the needs of the development of new quality productive forces, and has important practical significance for increasing the protection of brand intellectual property rights and promoting high-quality economic and social development.