September 29, 2023


Learn Business From Experience

Consolidation of Trademark Actions – Harris Bricken Sliwoski LLP

5 min read

Consolidation of trademark actions is a much-needed procedural avenue in China, one that may make the nation’s trademark system extra environment friendly and fairer. Actions that concern the identical trademark, reminiscent of purposes, oppositions, and cancellations, are typically not consolidated, wreaking all kinds of havoc for manufacturers. This despite the fact that the Trademark Legislation has provisions that enable for such consolidation to happen beneath some circumstances.

Let’s start by illustrating the issue to be addressed by means of efficient consolidation of trademark actions. Think about that you just need to register the trademark ABC, which you’ve got been utilizing in your items for years in america and in different international locations. Because it seems, the ABC mark was registered in China 5 years in the past by China Co. Nonetheless, China Co. has by no means used the trademark, making it weak to a non-use cancellation (NUC) request.

You go forward and file an NUC request in opposition to China Co.’s registration in January. On the identical day, you file your personal software to register ABC. The issue is that, whereas your software will nearly definitely be examined comparatively shortly (maybe as early as April, given the China Nationwide Mental Property Administration’s (CNIPA) present rocket docket), the NUC request will in all probability not be thought of till August or September. That implies that, on the time your trademark software is examined, China Co.’s registration for ABC will stay legitimate and block your personal software.

Consolidation of your trademark software and the NUC request beneath such circumstances would make a whole lot of sense. If CNIPA discovered that the NUC request has benefit and canceled China Co.’s registration, CNIPA might then proceed with its examination of your trademark software – with out contemplating China Co.’s registration, since it might have been cancelled for non-use. Alternatively, if CNIPA rejected the NUC request, it might proceed to look at your software, and reject it due to China Co.’s prior proper.

However that’s not the way in which it presently works, which is why we name for efficient avenues to hunt consolidation of trademark actions. Within the state of affairs described above, CNIPA would nearly definitely take into account your trademark software and NUC request individually (even in the event you requested for consolidation), which in observe will imply that your trademark software will probably be denied, requiring you to file a brand new software in the event you nonetheless need to register your trademark. See China Trademark Cancellations: Technique and Timing for additional dialogue of those points and why the opportunity of consolidating actions could be welcomed.

Wait, you may be considering. Why not simply file the NUC request first and wait to see if it’s granted earlier than submitting the trademark software? The issue with that strategy is that another person would possibly file an software for ABC within the interim. And there not being a previous software filed by you, that software could have a senior proper.

Contemplate a attainable state of affairs that may happen in the event you filed an NUC request in opposition to China Co.’s ABC registration however did not accompany it with a trademark software of your personal to register ABC, as you need to wait and see what occurs with the NUC motion. In October, whereas nonetheless ready to listen to from CNIPA concerning the NUC request, a Zhongguo Co. information an software to register ABC. At that time, Zhongguo Co.’s software is subsequent in line after the unique China Co. registration. Including insult to damage, if CNIPA grants the NUC request that you bankrolled and cancels China Co.’s registration, it’s Zhongguo Co. that stands to learn, not you. Due to your profitable NUC request, the trail could have been cleared for approval of Zhongguo Co.’s registration software for the ABC trademark. What’s worse, versus China Co.’s, Zhongguo Co.’s new registration won’t be weak to an NUC motion for at the least three years – and that’s assuming they don’t in actual fact use the mark.

It could be that Zhongguo Co. is expounded to China Co. and doing its bidding by submitting a brand new software to register ABC (which, if China Co. filed themselves, in all probability wouldn’t get permitted). Or maybe Zhongguo Co. took discover of the truth that somebody filed an NUC request in opposition to China Co’s mark and figured it was a precious mark. Possibly that they had been coveting the mark, and figured that sooner or later you would possibly attempt to cancel China Co.’s mark, provided that it’s a mark you utilize in different international locations. Or it might even be the case that it’s only a coincidence that Zhongguo Co. utilized on the proper second to take benefit. It doesn’t matter. The underside line is that now there’s a new impediment between you and registration of the ABC trademark. Consolidation of trademark actions would assist handle this challenge.

To keep away from points, manufacturers will usually file a couple of trademark software whereas they look forward to an motion in opposition to a blocking mark to be determined. On this manner, they make sure that they’re at all times first in line. Nonetheless, that is unnecessarily wasteful. It could make way more sense for CNIPA to permit trademark purposes and cancellation actions in opposition to conflicting marks to be consolidated (which beneath some circumstances is already permitted by the Trademark Legislation). This might be straightforward to perform, plus CNIPA might take into account levying consolidation charges that may make up for any misplaced income from software charges. Trademark candidates must also be allowed to remain their software whereas they prosecute cancellation actions in opposition to emblems cited in a CNIPA refusal – it isn’t at all times attainable to determine which marks will current an impediment to registration of your marks on the time you file an software.

The provisions within the present Trademark Legislation don’t go so far as what we advise, however their efficient software could be a begin. On the similar time, Chinese language lawmakers ought to reap the benefits of the revision of the Trademark Legislation that’s presently underway to increase the procedural automobiles for events to consolidate actions. Furthermore, they need to set up particular rights to invoke them, relatively than counting on a CNIPA discretion that not often delivers optimistic outcomes for events in search of redress in opposition to unhealthy religion actors.

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