Business Question 

If your company has, for the past several years, followed a familiar filing pattern — registering trademarks across dozens of related classes before a new product launch, even without a concrete business plan, or setting aside an annual budget for batches of “just in case” defensive filings — this article is worth your full attention.

A single provision in the new Law's Chapter II could turn that long-standing practice from an industry habit into a compliance risk.

The question we want to answer is not “which registration conditions changed,” but: which parts of your current filing strategy can continue as before, and which need a fresh look?

  Legal Update 

The new Law adds a standalone Chapter II, “Conditions for Trademark Registration” (Articles 14 through 25). This is one of the most significant structural changes in this revision — previously, the scope of registrable signs, distinctiveness requirements, and absolute grounds for refusal were scattered across the filing and examination chapters. This is the first time the question of “what may be registered as a trademark” has been organized into a single, dedicated chapter, and that reorganization itself reflects a shift in legislative thinking: away from the previous piecemeal approach of adding a provision wherever a gap appeared, and toward a structured framework built around registration conditions as a core concept.

Of the twelve articles in Chapter II, four carry real weight for a company's filing strategy: Article 14 defines the basic scope of registrable signs (words, designs, letters, numerals, three-dimensional signs, color combinations, sounds, motion marks, and combinations thereof); Article 18 adds a “functionality exclusion” rule applicable to three-dimensional signs, color combinations, sounds, and motion marks; Article 19 adds a catch-all provision refusing registration of applications “not filed for the purpose of use and obviously exceeding what is reasonably required for normal business operations”; and Article 24 continues to protect trademarks already used by another party and having acquired a certain influence, prohibiting bad-faith preemptive registration.

Of these four, Article 19 has the most direct bearing on a company's day-to-day filing strategy, and is the one most worth examining closely. The reason is straightforward: Article 14 sets the basic threshold for whether a sign may be registered at all — most routine filings never come close to that line; Article 18 affects only the relatively narrow category of non-traditional marks; and Article 24 targets bad-faith preemptive filings that infringe another party's prior rights, conduct most compliant companies would never engage in to begin with. Article 19 alone reaches directly into the kind of bulk defensive filing many companies have long treated as routine practice — which is exactly the provision we examine in depth below.

Practical Analysis 

Article 19 provides that an application “not filed for the purpose of use, and that obviously exceeds what is reasonably required for normal production and business operations, shall not be approved for registration.” Behind this single sentence lie three drafting choices worth a company's close attention, because each one shapes how the provision will actually apply in practice.

The first choice: why “not filed for the purpose of use” rather than a direct prohibition on “bad-faith filing”? “Bad faith” is a subjective state of mind, difficult to prove and inconsistently applied — the existing provisions addressing bad-faith registration (such as the current Article 4) have long struggled in practice with vague standards and uneven enforcement. The new Law instead adopts a relatively objective standard — whether the filing is for the purpose of use — that can be supported by external evidence such as product plans, sales records, and marketing schedules. This means examination and enforcement authorities will increasingly focus not on the unprovable question of what an applicant subjectively intended, but on whether there is a visible, articulable business plan behind the filing. The practical upshot for companies is that the burden of explanation has, in effect, shifted toward the applicant: being able to clearly state why a mark was filed now matters more than it used to.

The second choice: why “obviously exceeds what is reasonably required for normal business operations,” rather than a blanket prohibition on defensive filing? This drafting choice signals that the legislature clearly recognizes defensive filing as a legitimate brand protection tool in its own right. The issue is not pre-emptive filing as such, but whether the scale of that filing bears a reasonable relationship to the company's actual business needs. The qualifier “obviously exceeds” leaves considerable room for judgment: a consumer goods company with tens of millions in annual revenue pre-emptively filing across several dozen classes it may expand into would not necessarily be found to “obviously exceed” that need; an entity with no actual business record filing hundreds of marks across every industry category within a short span would very likely be found to do so. In other words, Article 19 does not regulate defensive filing as a category — it regulates the mismatch between filing scale and genuine business need, which is a far more useful yardstick for a company assessing whether its own filing strategy is compliant.

The third choice: why not require companies to declare their intent to use in advance, as the 2023 exposure draft once proposed? As we noted in Part I, the 2023 exposure draft at one point required rights holders to file a use declaration every five years — a requirement dropped from the final text. That omission itself sends a signal: the legislature prefers to concentrate scrutiny of genuine use at the back end — in non-use cancellation proceedings and infringement defenses — rather than requiring companies to prove their intent to use at the filing stage. This means companies are not, and are unlikely to be, required to submit a formal “use plan” when filing — but that does not mean internal documentation can be skipped. Once a mark becomes the subject of an opposition, invalidation, or non-use cancellation proceeding, whether the company can produce the business rationale behind the original filing will remain the decisive factor.

  Practical Impact 

Building on this analysis, the practical impact of the new Law on a company's filing strategy can be summarized across three levels.

First, purely placeholder defensive filings now carry materially higher risk. An application in a given class that has no corresponding product roadmap, sales plan, or brand-extension rationale is more likely to be found to “obviously exceed” what is reasonably required.

Second, defensive filings grounded in a genuine business rationale remain a reasonable and necessary strategy — but now require fuller internal documentation to support them. Consider an illustrative scenario: a consumer goods company currently focused on personal care products has internally mapped out a plan to expand into pet care products within three years, and has pre-emptively registered trademarks in the relevant classes accordingly. This kind of defensive filing is entirely legitimate, and the new Law does not prohibit it. The key question, however, is whether that “three-year expansion plan” is documented anywhere within the company — strategy meeting minutes, a product roadmap, budget approval records. Without any internal record, relying purely on an oral account, the company will struggle to produce persuasive evidence if the mark is later challenged in opposition or non-use cancellation proceedings. This is precisely why, under the new Law, whether a business plan genuinely exists and whether it has been documented now matter equally at the filing-strategy stage — for the first time.

Third, filing strategy for non-traditional marks (three-dimensional shapes, color combinations, sounds, motion marks) warrants a fresh look. The expanded functionality exclusion under Article 18 means that where a design feature is driven primarily by technical function or practical value rather than brand identification, registration becomes harder to obtain. Before filing this type of mark, companies should first assess whether the core feature in question is functionally driven or primarily decorative and source-identifying.

  GreRoyalt Observation 

Drawing on our sustained work in opposition and invalidation proceedings, where disputes over genuine use and commercial reasonableness arise routinely, we offer the following judgment: once the new Law takes effect, what examination and enforcement authorities are likely to focus on is not the sheer number of trademark filings a company makes, but whether each filing is backed by a business rationale that can be understood and verified. Volume itself is not a risk signal — a mismatch between volume and an explainable business rationale is.

On the strength of this view, we recommend that companies maintain an internal record for each filing, which we refer to as a “Business Justification File.” It need not be a formal legal document, but should at minimum cover three elements: the specific product or business plan the filing supports, the anticipated timeline for actual use, and a brief explanation of why pre-emptive filing makes sense at this particular stage. This file need not be disclosed externally under ordinary circumstances, but should the mark later face an opposition, invalidation, or non-use challenge, it will be the company's most direct and efficient evidence of the filing's legitimacy.

We also suggest companies test each new filing against three simple questions: is there a realistic prospect this mark will be used within the next three years? Does it correspond to a specific business plan, rather than a generic “just in case” rationale? And if asked why the mark was filed, can the company give a specific, verifiable answer within a reasonable time? If all three can be answered affirmatively, the filing is likely to hold up under the new Law. If any one of them is difficult to answer clearly, that is a sign the company should reconsider whether the filing is genuinely necessary at this time.

  Practice Checklist 

✓  Build a Business Justification File for each planned trademark filing, documenting the corresponding business plan, anticipated use timeline, and rationale for filing.

✓  Reassess your filing strategy for non-traditional marks (three-dimensional, color, sound, motion), determining in advance whether the core feature is functionally driven or primarily source-identifying.

✓  Run existing peripheral-class defensive registrations through the three-question test above, prioritizing review of any filings that are difficult to clearly justify.

In the next installment: “How Should Well-Known Trademarks and Prior Rights Be Protected? Brand Asset Protection Enters a New Era” — examining the new Law's adjustments to similarity examination, well-known trademark protection, and bad-faith filings by agents, and how trade names, domain names, and other commercial identifiers should be brought into a unified brand asset protection framework.

This article is provided for general informational purposes only and does not constitute legal advice for any specific matter. Please consult qualified counsel regarding your particular circumstances.