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Non-use trademark cancellation in China: laws, rules and tips
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Trademark Oppositions in China

Chinese Trademark Law and corresponding regulations provide that a person may apply to the Trademark Office for cancellation of a registered trademark which has not been in use for three consecutive years or more. Thereafter, the onus is on the registrant to provide evidence of use or to furnish a reasonable explanation for non-use, within two months of receiving the Circular of Providing Evidence of Use of Registered Trademark ("Circular") from the Trademark Office. However, the phrase "use of the registered trademark" was never specifically defined. This made it onerous and difficult for trademark registrants and agents to provide credible and adequate evidence to the Trademark Office in a timely manner.

To dispel doubts and confusion, the Trademark Office has issued new regulations to explicitly define the term "use" of a registered trademark to mean "to use the trademark on goods, packaging or container of goods and the transactional documents related to goods, or use the trademark in advertising, exhibition and other commercial activities". "The release of trademark registration information shall not be deemed to be use of the trademark in commercial activities". In addition, trademark licensing agreements, sales or service agreements and written testimony alone will not be accepted as evidence of trademark use without other corroborative evidence.

It must be pointed out that the new regulations are merely procedural in nature. Hence, they do not have any binding effect.

Trademark Cancellations

A registered trademark can potentially exist in perpetuity- assuming that your trademark mark is kept in proper order. Your registered trademark can become abandoned if you fail to make the proper filings before the United States Patent and Trademark Office (USPTO). Furthermore, a registered trademark is subject to cancellation by third parties under certain conditions.

The two most common reasons for a trademark cancellation are non-use by the registrant and the mark becoming generic. Although a trademark can indeed exist forever, these trademark rights are subject to continued use in commerce. Substantial non-use in commerce provides the opportunity for third parties to file a cancellation before the USPTO. The third party would need to properly detail the grounds for such non-use, and provide specific details that clearly show that you have not been using your mark. It is thus important to continue to use your registered trademark in commerce, and make the necessary filings before the USPTO.

A second ground that can be used to cancel a trademark is that the mark has become generic. This means that your mark has become so associated with the underlying good or service that it is used interchangeably with your mark. Once a registered trademark becomes generic, it is no longer subject to trademark protection- and is thus subject to cancellation. Owners of trademarks, including registered trademarks, should take steps to protect their marks to ensure they do not become generic.

There are other reasons for cancellation, such as fraud in obtaining the registration, which can lead to the cancellation of a trademark at any time. Some registered trademarks, after they have become "incontestable," are more difficult to cancel. Fraud is one allegation that can be brought at any time; however the standards for proving fraud can be at times difficult.

Our law firm has experience bringing and defending against trademark cancellations. It is possible to represent yourself before the USPTO during a trademark cancellation-- however we recommend using the services of an attorney that is familiar with trademark law and has experience with cancellations.

Oppositions in national trademark registration procedure

Trademark opposition filing deadlines

According to the national jurisdiction the term of opposition is of three months beginning with the publication date in the local gazette.
The initial opposition term cannot be extended.

Trademark opposition requirements

The trademark opposition can be filed in person at the opposition authority or by mail.
The opponent must complete the application for trademark opposition in duplicate, which shall specify both the issue number of the Trademark Gazette in which the opposed trademark is published and the number of the preliminary approval; power of attorney; relevant evidence, attached to the application for opposition; if the opponent is a natural person, a duplicate copy of the valid credentials.
The documentation should be supplied within three months from the filing date of the opposition.
The opponent has to be represented by a local authorized agent during the entire process
All documentation required has to be translated in the Chinese language.

Trademark opposition grounds

The trademark opposition is available to all or to part of the goods/services of a trademarks application and also to collective and certification trademarks.
The trademark opposition can be based on relative and absolute grounds, bad faith, conflicting copyright or design rights, rights under Art. 6 bis of the Paris Convention including the notorious or well-known mark, rights under Art. 6 septies of the Paris Convention or the equivalent thereto, registered company name (local or foreign), rights under Art.8 of the Paris Convention (trade names), rights under Art. 6 ter of the Paris Convention or the equivalent thereto (Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations); offenses against public policy or principles of morality; conflict with prior rights in a personal name or portrait; prohibitions concerning geographical names of the administrative divisions at or above the county level and foreign geographical names that are well known to the public.
The examiner will send a copy of the opposition to the applicant who has to response within 30 days from the date of receipt of the opposition’s copy.
In case of an international registration the trademarks can be opposed on the same grounds as the national trademark applications.

Oppositions and Examination

Trademark examination is based on absolute and relative grounds being conducted before the publication for opposition. During the examination based on relative grounds, the examiner can issue a refusal based on prior marks.
The opposition is not considered as part of the examination and is decided in a separate proceeding.




Alternatives to trademark opposition

The alternative that an opponent can use is the cancellation.
The cancellation or any equivalent procedure should be based on relative grounds, absolute grounds, on non-use, bad faith issues; conflicting copyright or design rights; rights under Art. 6 bis of the Paris Convention or notorious or well-known mark; rights under Art. 6 septies of the Paris Convention; rights of a registered company name (local or foreign); rights under Art. 8 of the Paris Convention or the equivalent thereto; rights under Art. 6 ter of the Paris Convention(Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations); offenses against public policy or principles of morality; conflict with prior rights in a personal name or portrait; prohibitions concerning geopraphycal names of the administrative divisions at or above the county level and foreign geographical names that are well known to the public.
A cancellation action (other than non-use) must be filed within five years from the registration date. In case of an well-known mark involved and the bad faith of the registrant is obvious, a cancellation action may not be bound by the five-year limitation. For non-use grounds the deadline is after three years from the registration.
The cancellation authority for non-use grounds is the Chinese Trademark Office and in other cases is the Chinese Trademark Review and Adjudication Board.

Trademark opposition parties

The opponent can be any natural and juridical person with relevant priority rights.
Two or more opponents, a parent company and it trading subsidiary or two otherwise unrelated companies may jointly file a single opposition if they have common interests.
If the opponent based his opposition on a priority he doesn’t has to provide proofs of use to the applicant or to the opposition authority.

Post- Filing

In this jurisdiction, opposition proceedings require alternating action by one party after the other.
If the opponent has withdrawn the opposition, the opposition authority can still reject the opposed application on any of the opposition grounds.

Appeals

An opposition decision can be appealed in 15 days from receipt of the notification of the opposition decision, apply for a review to the Trademark Review and Adjudication Board.
The opponent can be represented by the same agent who filed the opposition but is recommended the representation of a specialist counsel.
Higher appeals can be made to the Trademark Review and Adjudication Board, within 30 days from receipt of the notice of the ruling, institute legal proceedings with the people’s court.

Oppositions in the international trademark registration procedure having China like designated country

The difference regarding the terms between an opposition to a national and an international trademark applications is that the term for an International Registration is of three months starting with the first day of the month after the publication in the WIPO gazette. Another difference is that for International Registration the opposition period is before ending of the examination while for the national application, the opposition period is after the examination process.

The Chinese Trademark Office recently laid down specific examples of evidence of use that a registered trademark proprietor can provide to defend successfully against a cancellation action for three years' non-use of that mark.

For a product mark, the evidence can consist of use of the trademark:
•on the product itself or on its container, packaging, label, additional tag, instruction manual or user handbook;
•on commercial documents relating to the product, including the sales agreement, invoice, receipt, bill, import or export certificate of inspection or quarantine or customs declaration; or
•in advertising or promotional activities relating to the product, such as in radio or television broadcasts, printed publications approved by the Department for Publication Administration of the State Council, advertising billboards, mail advertisements or government-approved exhibitions or expositions.

Evidence to show use of a service mark can include use of the mark on a service manual, sign board, sign or decoration, menu (for restaurant services), price list, registration certificate for provision of the services, coupon, stationery, invoice, agreement for provision of the services, remittance voucher or invoice.

The Trademark Office considers the following reasons for non-use of the mark to be valid:
•force majeure;
•government restrictions;
•liquidation or bankruptcy of the proprietor; or
•other circumstances where the proprietor cannot use the trademark.

 

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