Mr. Jason Wang, partner at Beijing East IP Law Firm, published Determination of “Bad Faith Filing” –Analysis on the Supreme People’s Court Re-trial Case of DUCK KING on 2013 Issue 6 of China Trademark magazine.

The DUCK KING case began when Shanghai Duck King Restaurant filed the trademark application in January 2002 and the battle continued until February 2013 when the Supreme People’s Court (SPC) rendered the decision rejecting Beijing Duck King Restaurant’s re-trial request. This case lasted for more than a decade and involved all possible legal procedures, including two unprecedented re-trials. Both the Beijing High People’s Court in 2010 and the SPC in 2013 held favorable decisions and verdicts for Shanghai Duck King for the two re-trials where Shanghai Duck King is represented by Mr. Wang.

First, this article analyzed the 7 factors listed by the Trademark Examination Standards promulgated by the Chinese Trademark Office and the Trademark Review and Adjudication Board when determining “bad faith filing” prescribed by Article 31 of the Chinese Trademark Law, as well as Article 18 of the Opinions of the China Supreme Court Concerning Trial of Administrative Cases in Respect of Trademark Right Granting and Confirmation, where Article 31 is applicable when an applicant knows or should have known other’s certain influential trademark but preemptively registers that mark.

Second, with respect to the SPC’s re-trial ruling that “only when a disputed mark’s applicant knows or should have known a prior mark, AND intentionally obtained unjustified benefit from the prior mark’s good will with bad faith, then he is the target Article 31 shall contain”, the article reads the SPC’s above ruling as follows: “know or should have known” does not constitute as a standard to recognize “unfair means,” but whether the disputed mark’s applicant has an intention to free ride or exploit other’s good will is the substantive determination of unfair preemptive registration. Based on the above, the article hold the view that SPC’s re-trial decision has further developed and refined the judicial opinions by fully understanding the Chinese Trademark Law’s legislative intent and the intrinsic value of judicial opinions, when combined with the facts presented in the specific case. The essence of this re-trial is that (1) a mark’s inherent distinctiveness and the disputed mark’s history shall be carefully considered when determining “bad faith filing”, and (2) the subjective fact where a disputed mark established its good will through good faith use.

Lastly, the article summarizes that the DUCK KING case inspires the importance of trademark awareness, which not only includes the awareness to file a trademark application, but also the awareness to aggressively appeal after trademark rejection, the awareness of trademark risk prevention, the awareness of registering a trademark before marketing, and the awareness to avoid legal risk and conflict of rights.