In the process of a trademark registration application, the applicant is likely to encounter the obstacle posed by a "cited trademark". To remove this obstacle, filing a request for "three year non-use registration cancellation" (hereinafter referred to as "non-use cancellation") against the cited trademark is a relatively convenient and efficient means. In practice, this means is also widely adopted by trademark applicants in trying to avoid the adverse effects of maliciously registered trademarks and unused trademarks on the registration applications for trademarks of real commercial value. However, there is some skill involved in the filing of a non-use cancellation request. Finding the right time to file it may help trademark applicants obtain a favourable examination result. Below we will demonstrate, through a case study, the importance of choosing the right time to file a non-use cancellation request.
Case Study
A famous European football club (hereinafter referred to as “applicant”) filed a request for territorial extension of protection to China (“extension request”) after having obtained an international trademark registration; however, due to the existence of a prior similar trademark (“cited mark”), the applicant’s extension request was refused by the China Trademark Office.
After investigations, it was confirmed that the cited mark was never put to use in the Chinese market. In view of the fact that the cited mark had been registered for three years, and the negotiation about assignment of the cited mark also failed, filing a non-use cancellation request became the only way to overcome the cited mark.
Article 35(4) of China Trademark Law stipulates that, “In the review procedure based on the provision of the preceding paragraph, the Trademark Review and Adjudication Board may suspend the review if the existing earlier right concerned shall be determined based on the result of another case which is heard by the People’s court or is handled by the administrative agency. The review procedures shall be resumed after the causes of the suspension have been eliminated.”
According to the above provisions, as long as the applicant immediately filed a request for non-use cancellation against the cited mark and asked the Trademark Review and Adjudication Board to suspend the review of the refusal and wait for the result of the examination on the non-use cancellation request, the applicant could protect their rights and interests to the greatest extent. However, if the non-use cancellation request was not filed before the filing of the extension request, the Trademark Review and Adjudication Board generally would not suspend the review to wait for the result of the non-use cancellation. Since the review of refusal and the examination on the non-use cancellation request both would take 9-12 months, the decision on non-use cancellation might be issued before or after the completion of the review. If the latter, the cited mark would continue to impede the extension request from getting approved.
In order to increase the chance of success in obtaining protection in China for the international trademark registration, after a comprehensive evaluation of the case, we proposed the following two options to the applicant:
Option 1:
Step 1: filing a non-use cancellation request;
Step 2: filing a request for review of the refusal;
Step 3: immediately filing a backup national application for registration of the same trademark.
Option 2:
Step 1: filing a non-use cancellation request;
Step 2: immediately filing a second extension request.
In the above two options, if the decision on non-use cancellation is issued before the completion of the refusal review/the examination on the second extension request, and the decision is in favour of the applicant, then the international trademark registration can obtain protection in China; while if the decision on non-use cancellation is issued after the completion of the refusal review/the examination on the second extension request, then when the backup trademark application/the second extension request enter review procedures, the applicant could ask the Trademark Review and Adjudication Board to suspend the review and wait for the result of the examination on the non-use cancellation request. Of course, there is still risk in the above two options. For example, if, before the applicant files the backup trademark application or second extension request, an application is filed by others for registration of a similar or identical trademark, then such application will become a difficult obstacle to the applicant’s backup trademark application/second extension request.
After careful consideration, the applicant chose Option 2. Then, when the second extension request was also refused because of the same cited mark, the applicant immediately filed a request for review of the refusal and meantime asked for suspension of the review to wait for the result of the examination on the non-use cancellation request.
The Trademark Review and Adjudication Board accepted the applicant’s request for suspension of the review. Then, as the registrant of the cited mark failed to provide evidence of use of the mark within the prescribed time limit, the cited mark was cancelled by the China Trademark Office. Accordingly, the applicant’s extension request was approved, and their international trademark registration finally obtained protection in China
Comments
Filing a non-use cancellation request is a relatively efficient way to overcome a cited mark, but the timing of filing such request is crucial to the success of the trademark registration. In the above case, the applicant filed such request before filing the second extension request, so in the review procedure they could ask the Trademark Review and Adjudication Board to suspend the review and wait for the result of the examination on the non-use cancellation request, thereby successfully obtaining protection in China for their international trademark registration.
Considering that there are special requirements on the timing of filing a non-use cancellation request when such request is used as a reason for asking for suspension of a refusal review, it is quite necessary for the applicant to conduct a thorough trademark search before filing a trademark application, so as to find as early as possible prior marks which may be cited against their trademark application. In this way, the applicant not only would gain more time to make preparation for possible obstacles, but also could take full advantage of the procedural rights given by the Trademark Law to protect their rights and interests to the greatest extent.
Hope the above may help you better understand when and how to use the non-use cancellation.
The article was originally published at IPLink-Asia at http://www.iplink-asia.com/articles/297
