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Trademark Invalidation Procedures in China

21

JAN

2021

Article 50 of the Trademark Law stipulates that "If a registered trademark is revoked, nullified or subject to no renewal upon expiration of the period of validity, the Trademark Office shall not approve any application for the registration of a trademark identical with or similar to the said trademark within one year as of the day of the revocation, nullification or cancellation.”

Let's first take a look at how the conditions listed in Article 50 arise:

Revocation: If a registered trademark becomes the generic name of the goods approved for use or has not been used for three consecutive years without a valid reason, any entity or individual may apply to the Trademark Office for the cancellation of the registered trademark.

Declared invalid(nullified): If a registered trademark violates the provisions of Articles 4, 10, 11, and 12 of this law, or is registered by deception or other improper means, the Trademark Office shall declare the registered trademark as invalid; other entities or individuals may request the Trademark Review and Adjudication Board to declare the registered trademark invalid.

A registered trademark which is in violation of Article 13, paragraphs 2 and 3, Article 15, Article 16, paragraph 1, Article 30, Article 31, and Article 32 of this law within five years from the date of registration of the trademark, the prior right holder or interested party may request the Trademark Review and Adjudication Board to declare the registered trademark invalid. For malicious registration, the owner of a well-known trademark is not subject to the five-year time limit.

No renewal after the expiration: if the registered trademark is requested for continued use after the expiry date, the trademark registrant shall go through the renewal procedures in accordance with the regulations within twelve months before the expiration; if the trademark fails to be processed during this period, six months grace period may be granted. If the renewal formalities are not completed, the registered trademark shall be cancelled.

Let us now look at the legislative purpose of Article 50.

In principle, the previously registered trademark has been revoked, declared invalid, or will not be renewed after the expiry date, and becomes invalid. It should not hinder the subsequent registration of the trademark. However, because the goods of the previously invalid registered trademark may still be in the market for a certain period of time, the influence of its trademark still exists to the relevant public. In order to avoid the registration and use of subsequent trademarks causing consumer confusion, mispurchasing, and harming the interests of consumers, a one-year isolation period has been set up.

But should the above-mentioned circumstances be revoked, declared invalid, or not renewed after the expiration date, should a one-year quarantine period be granted? There are still exceptions.

First of all, if the trademark is revoked due to three years of non-use, it has not been used in the past three years and has actually met the one-year isolation period. Therefore, the "Trademark Examination and Trial Standards" stipulates that "because of three years of non-use as for the revoked trademark, if the original registrant has not filed for the revocation of registration review after the expiration of the revocation review period, it may not be quoted.” That is, if the revoked trademark is not used for three years, Article 50 of the Trademark Law does not apply. The trademark applied for later will not be rejected on the basis of that mark.

In addition, other situations are not included in the ranks of exceptions. In fact, there are still many situations that are not suitable for the application of Article 50.

1. A trademark that has been revoked because it has become a generic name for a commodity shall, in principle, be applied to Article 11 of the Trademark Law when others apply, and it shall be rejected if it is found to lack distinctive features, without applying the provisions of Article 50.

2. For trademarks that are invalidated due to Article 4 of the Trademark Law, in its 2020 updates, Article 4 has added the provision that "malicious trademark registration applications that are not intended for use shall be rejected", if the earlier registered trademark is invalidated due to Article 4, that is, it is determined that the trademark is not intended for use, and there is no possibility of confusion with the later trademark. Therefore, it should be the same as a trademark cancelled due to three years of non-use and the provisions of Article 50 do not apply.

3. Trademarks that have been invalidated due to malicious squatting of other people’s trademarks. In many invalidation cases, Article 13, paragraphs 2 and 3, Article 15, and Article 32 are applied, and registration is found to be malicious for trademarks, the provisions of Article 50 shall not be applicable.

The true right holders of a trademark usually file their own trademark application after invalidation. Even if the previous trademark is invalidated due to bad faith, the trademark applied for later will still be rejected for violating the provisions of Article 50, and must pass a review of refusal or reapply for the trademark to achieve the purpose of obtaining rights. If other people apply for similar trademarks in the future, there may be an embarrassing situation that the real right holders can hardly obtain the rights, which increases the time and money costs for the right holders to defend their rights.

Mr. Sun Ou of CNIPA’s Sixth Division called for consideration when reforming the law. He calls on the system to establish a system where trademarks that are determined to be malicious squatting through effective rulings can be directly transferred to the real right holders. If such a suggestion can be adopted in the future law reform, it will undoubtedly be a great encouragement to the rights holders.

Regardless of whether it is at home or abroad, rights owners seeking trademark registration and use must be aware of the trademark laws of the country/region where their marks are to be used; an understanding the trademark laws and regulations of each country can better exercise trademark rights and safeguard their legal rights and interests.

The legal information on the official websites of various countries can be complicated and time consuming to search and understand the trademark laws and regulations of various jurisdictions. To this end, Kangxin IP Platform has prepared a "Knowledge Center", a database with information on trademark registration procedures and requirements, official laws and regulations, as well as news from each jurisdiction, all supplied by our global partners. The database thus saves you valuable time spent searching for IP particulars in each country and allows you to focus on moving your business forward.

About the Firm

Kangxin Partners
Address Floor 16, Tower A, InDo Building, A48 Zhichun Road, Haidian District, Beijing 100098, P.R. China
Tel 86-10-5657 1588
Fax 86-10-5657 1599
Email gloriawu@kangxin.com
Link www.kangxin.com

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