Consolidation of Trademark Actions – Harris Bricken Sliwoski LLP
Consolidation of trademark actions is a much-needed procedural avenue in China, one that will make the nation’s trademark system extra environment friendly and fairer. Actions that concern the identical trademark, similar to functions, oppositions, and cancellations, are usually not consolidated, wreaking all types of havoc for manufacturers. This although the Trademark Regulation has provisions that enable for such consolidation to happen below some circumstances.
Let’s start by illustrating the issue to be addressed by efficient consolidation of trademark actions. Think about that you just need to register the trademark ABC, which you could have been utilizing in your items for years in the USA 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 towards China Co.’s registration in January. On the identical day, you file your personal utility to register ABC. The issue is that, whereas your utility will virtually 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 most likely not be thought-about till August or September. That implies that, on the time your trademark utility is examined, China Co.’s registration for ABC will stay legitimate and block your personal utility.
Consolidation of your trademark utility and the NUC request below such circumstances would make quite a lot of sense. If CNIPA discovered that the NUC request has benefit and canceled China Co.’s registration, CNIPA may then proceed with its examination of your trademark utility – with out contemplating China Co.’s registration, since it will have been cancelled for non-use. However, if CNIPA rejected the NUC request, it may proceed to look at your utility, 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 definitely contemplate your trademark utility and NUC request individually (even should you requested for consolidation), which in observe will imply that your trademark utility will likely be denied, requiring you to file a brand new utility should 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 can be welcomed.
Wait, you is perhaps considering. Why not simply file the NUC request first and wait to see if it’s granted earlier than submitting the trademark utility? The issue with that method is that another person would possibly file an utility for ABC within the interim. And there not being a previous utility filed by you, that utility may have a senior proper.
Take into account a potential state of affairs that will happen should you filed an NUC request towards China Co.’s ABC registration however did not accompany it with a trademark utility 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 utility to register ABC. At that time, Zhongguo Co.’s utility 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 profit, not you. Because of your profitable NUC request, the trail may have been cleared for approval of Zhongguo Co.’s registration utility 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 at the very least three years – and that’s assuming they don’t the truth is use the mark.
It could be that Zhongguo Co. is said to China Co. and doing its bidding by submitting a brand new utility to register ABC (which, if China Co. filed themselves, most likely wouldn’t get authorised). Or maybe Zhongguo Co. took discover of the truth that somebody filed an NUC request towards China Co’s mark and figured it was a precious mark. Possibly they’d been coveting the mark, and figured that sooner or later you would possibly attempt to cancel China Co.’s mark, on condition that it’s a mark you employ 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 handle this problem.
To keep away from points, manufacturers will typically file a couple of trademark utility whereas they look forward to an motion towards a blocking mark to be determined. On this means, they be sure that they’re all the time first in line. Nevertheless, that is unnecessarily wasteful. It might make way more sense for CNIPA to permit trademark functions and cancellation actions towards conflicting marks to be consolidated (which below some circumstances is already permitted by the Trademark Regulation). This could be simple to perform, plus CNIPA may contemplate levying consolidation charges that will make up for any misplaced income from utility charges. Trademark candidates must also be allowed to remain their utility whereas they prosecute cancellation actions towards logos cited in a CNIPA refusal – it isn’t all the time potential to establish which marks will current an impediment to registration of your marks on the time you file an utility.
The provisions within the present Trademark Regulation don’t go so far as what we recommend, however their efficient utility 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 increase the procedural autos for events to consolidate actions. Furthermore, they need to set up particular rights to invoke them, relatively than counting on a CNIPA discretion that hardly ever delivers optimistic outcomes for events searching for redress towards dangerous religion actors.