September 21, 2023


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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, corresponding to functions, oppositions, and cancellations, are usually not consolidated, wreaking all types of havoc for manufacturers. This despite the fact that the Trademark Regulation has provisions that permit for such consolidation to happen underneath some circumstances.

Let’s start by illustrating the issue to be addressed by efficient consolidation of trademark actions. Think about that you simply need to register the trademark ABC, which you’ve got been utilizing in your items for years in the US and in different international locations. Because it seems, the ABC mark was registered in China 5 years in the past by China Co. Nevertheless, 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 individual software to register ABC. The issue is that, whereas your software will virtually actually 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 signifies that, on the time your trademark software is examined, China Co.’s registration for ABC will stay legitimate and block your individual software.

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

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

Wait, you could be pondering. 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 method is that another person may 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 doable state of affairs that may happen when you filed an NUC request in opposition to China Co.’s ABC registration however did not accompany it with a trademark software of your individual 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 relating to 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 harm, 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 is not going to be weak to an NUC motion for no less than three years – and that’s assuming they don’t in truth use the mark.

It could be that Zhongguo Co. is said 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 authorized). 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 useful mark. Perhaps they’d been coveting the mark, and figured that sooner or later you may attempt to cancel China Co.’s mark, on condition that it’s a mark you utilize in different international locations. Or it may 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 tackle this situation.

To keep away from points, manufacturers will usually file multiple trademark software whereas they look ahead to an motion in opposition to a blocking mark to be determined. On this method, they make sure that they’re at all times first in line. Nevertheless, that is unnecessarily wasteful. It might make way more sense for CNIPA to permit trademark functions and cancellation actions in opposition to conflicting marks to be consolidated (which underneath some circumstances is already permitted by the Trademark Regulation). This could be simple to perform, plus CNIPA may 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 doable 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 Regulation don’t go so far as what we advise, however their efficient software can be a begin. On the identical time, Chinese language lawmakers ought to benefit from the revision of the Trademark Regulation that’s at the moment underway to develop the procedural automobiles for events to consolidate actions. Furthermore, they need to set up particular rights to invoke them, quite than counting on a CNIPA discretion that not often delivers constructive outcomes for events in search of redress in opposition to unhealthy religion actors.

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