This article is a translation of a work by Professor Kong Xiangjun. The original text can be found at: https://mp.weixin.qq.com/s?__biz=MzUwOTg0MTkwNA==&mid=2247486267&idx=1&sn=a92bcb198c7723302ecba094fee3ea85&scene=21&poc_token=HAFTBGmjqSmbXCdR7tezsfxsbrG2EbtMGK9BEFJX
Key Issues in the Current Use of “Other Unfair Means”
In current practice regarding trademark invalidation, the application of “other unfair means” faces several significant challenges:
(a) Whether it should be applied alongside Article 4, Paragraph 1. During the enforcement of the Trademark Law in 2001 and 2013, “other unfair means” primarily targeted trademarks registered without genuine intent to use. This led to the inclusion of a prohibition in Article 4, Paragraph 1 in the 2019 revision, raising questions about whether the former has been superseded by the latter and whether its scope has effectively disappeared.
(b) Whether trademark registrations based on association (parasitic trademarks) fall under “other unfair means.” Both the 2021 Trademark Examination and Trial Standards by the National Intellectual Property Administration and the 2019 Trial Guidelines for Administrative Cases on Trademark Authorization and Confirmation by the Beijing High People’s Court classify acts of parasitizing others’ trademarks or commercial signs as “other unfair means,” focusing on penalizing mass registrations and subjective bad faith. This raises questions about whether invalidation is purely punitive or serves other legislative purposes, whether it constitutes relative or absolute grounds, and whether numerous parasitic registrations can override prior rights and become absolute grounds.
(c) Conditions under which “hoarding” trademark registrations are considered “other unfair means.” Cases involving large numbers of trademark registrations are often labeled as “other unfair means,” sometimes ignoring registration order or actual use, relying solely on quantity as evidence of wrongdoing. This raises the issue of whether the defining factor for “other unfair means” is the absence of genuine intent to use or merely the volume of registrations.
(d) Misalignment of invalidation grounds, arbitrary invalidation decisions, and intensified competition in the invalidation field. “Other unfair means” often substitutes for relative grounds protecting prior rights, leading to functional misplacement and application deviations.
The Relationship Between “Other Unfair Means” and Article 4, Paragraph 1 of the Trademark Law
(a) Joint application of Article 4 and “other unfair means” before the 2019 revision
After the 2001 revision, issues such as trademark speculators hoarding and reselling registrations, and imitation of well-known domestic and international trademarks, drew significant attention. Due to the lack of specific legal provisions, “other unfair means” was used to curb these abnormal registration and hoarding behaviors, based on the premise that such registrations lacked genuine intent to use. Since Article 4 implicitly required actual use intent, its absence was deemed unfair and thus included under “other unfair means.” The key criterion was the lack of genuine use intent, not merely parasitism or quantity.
(b) Definition of “other unfair means” and its relation to bulk registrations without use
To clarify its scope, the 2010 Supreme People’s Court Opinions on Administrative Cases Concerning Trademark Authorization and Confirmation defined “other unfair means” as methods other than deception that disrupt trademark registration order, harm public interest, improperly occupy public resources, or seek unfair benefits by other means. This definition targeted hoarding bulk registrations without genuine use intent, categorizing them as disrupting registration order, improperly occupying resources, and seeking unfair profits (e.g., for resale). The 2017 Supreme People’s Court Provisions maintained this definition.
(c) Absorption and replacement of “other unfair means” by Article 4, Paragraph 1 in 2019
The 2019 amendment added a prohibition against “malicious trademark registration applications not intended for use” in Article 4, Paragraph 1, and incorporated it into Article 44, Paragraph 1 as a ground for invalidity. This provision elevates and replaces prior practices using “other unfair means” to invalidate hoarding, non-use bulk registrations. After its enactment, previous approaches should be subsumed under this new provision, eliminating parallel and separate applications. Thus, the historical role of “other unfair means” in regulating non-use registrations has been fulfilled.
(d) Incompatibility of applying both legal standards simultaneously
The relationship between the prohibition in Article 4, Paragraph 1 and “other unfair means” has not been sufficiently addressed. According to legislative intent, the provisions on disrupting registration order and improper resource occupation under “other unfair means” have been absorbed by the specialized prohibition in Article 4, Paragraph 1, thus losing their basis for application.
Expansion and Misapplication of “Other Unfair Means”
“Other unfair means” has been applied to situations that should be considered relative grounds and has been covertly expanded in scope and subjects. This relates to detailed provisions in the National Intellectual Property Administration’s 2021 Trademark Examination and Trial Standards and the Beijing High People’s Court’s Trial Guidelines.
The 2021 Trademark Examination and Trial Standards list circumstances constituting “obtaining registration by other unfair means,” including: (1) applicants registering multiple trademarks identical or similar to others’ highly distinctive trademarks; (2) applicants registering multiple trademarks identical or similar to others’ trade names, enterprise names, social organizations, well-known product names, packaging, or decoration; (3) applicants registering a large number of trademarks obviously lacking genuine use intent; (4) other situations deemed as obtaining registration by unfair means. Items (1) and (2) reflect previously disputed malicious registrations and continue the old concept of applying “other unfair means” since the 1993 Implementation Rules, potentially expanding relative grounds and extending protection of prior rights. Item (3) has been replaced by the 2019 Article 4 prohibition and thus lacks a basis. The Beijing High Court Guidelines have similar provisions.
These detailed “other unfair means” provisions essentially expand protection of prior rights by using absolute grounds to perform the functions of relative grounds. Moreover, they lack clearly appropriate types and examples truly within their scope, leaving little legitimate application space. Overuse of “other unfair means” has led to arbitrary expansion of invalidation declarations, disregarding registration order and actual use. Simply having many registrations can arbitrarily introduce disputes typically governed by prior registration conflicts, enabling cross-category challenges and often substituting absolute grounds for relative ones. This results in sudden invalidation of actually used and stable trademarks, causing severe operational difficulties and legal unfairness for businesses.
Inherent Legislative Flaws and the “Pure Punishment” Approach
Article 44, Paragraph 1’s “other unfair means” as a ground for invalidity creates inconsistency between trademark prohibitions and invalidity grounds. Using the “means” itself as an absolute ground easily leads to a “pure means theory” distortion, focusing regulation on the maliciousness or other “evils” of the registered trademark and declaring invalidity purely to punish such “malice” or “impropriety.” This can recklessly invalidate widely used trademarks, ignoring the Trademark Law’s purpose to promote trademark use. The practical application of “other unfair means” has seriously deviated, showing distorted phenomena such as “pure punishment,” “pure means,” and “pure quantity” theories.
Conclusion
With changing times, the normative basis for “other unfair means” has gradually disappeared. Its emergency historical role under special conditions has been fulfilled, and it no longer has a legitimate application space. Therefore, in the ongoing fifth revision of the Trademark Law, the “other unfair means” clause should be abolished and reorganized within the authorization and invalidity grounds. Before abolition, the expanded and distorted applications of “other unfair means” should be promptly addressed, thoroughly preventing its covert use to regulate relative grounds and arbitrary invalidation of actually used trademarks, making it unnecessary or reserved without practical use.