Over the years, we have seen many overseas prior right holders complained about the IP issues. From our intensive experiences, the followings are a couple of tips for these prior right holders.
Do not panic! This is not the end of the world. The fact shows that many prior rights holders have got their trademarks back, though the way of doing it could vary differently.
Hiring a good IP attorney is essential. A good IP attorney shall hear out the facts, search the disputed mark, and gather the materials together in a timely manner. After looking into and studying the materials, the attorney shall make a remedy strategy and discuss it with the Right Owner.
First of all, the trademark attorney shall find the detailed particulars of the disputed trademark. This will tell a lot of valuable information: the applicant name, the application date, specific name of goods and services, the class and sub-class, and the status of this trademark application, and any other records of the trademark.
Second of all, the facts shall be reviewed thoroughly. Who is the applicant for this trademark application? Does this applicant do the same business as the prior right holders do in China? Has the applicant ever contacted, negotiated, contracted with the prior right holders?
Third of all, depends on the status, the prior right holders may choose different remedies to get the trademark back: file opposition against this trademark application, file application of non-use cancelation, file application of invalidation cancelation, or negotiate with the current registrant of the trademark.
Opposition: This opposition application shall be filed within 3 months from the publication date of the trademark. Anyone can file an opposition based on the absolute legal grounds like the trademark is avoid of distinctive characters, but only the owner or interested party of the prior right owner is entitled to file an opposition. In order to take advantage of this remedy, the key is to find the same trademark application in China and watch it closely.
Non-use cancelation: There is a way to cancel the trademark based on the non-use in the 3 years from the filing date. This remedy is a great way to handle many "trademark-stealing" cases, as some of the company makes business by filing thousands of trademarks in hope with selling them back to the prior right holders in the future.
Invalidation cancelation: If this applicant's trademark application is identical or similar to a unregistered trademark which has been used by the prior right holders for use on the same type of commodities or similar commodities, where the applicant is aware of the existence of the trademark due to contractual or business relationship or any other relationship, according to the Article 15 and 45, the prior right holders can file the cancelation against this trademark on bad-faith base within 5 years. More importantly, holders of well-known trademarks shall not be subject to the 5 years restriction.
Many times, we have used the multiple ways to handle it as they may help each other. Non-use cancelation is a great way in most of cases considering the applicant bears no responsibility to file evidence proving the non-use, but the trademark registrant should respond to prove the commercial use. If the trademark registrant does not provide any documents, then the registrant will lose the mark. If the trademark registrant provides the documents proving the use of the mark, these documents might be used against the applicant in the process of invalidation cancelation or civil litigation.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
