In mainland China, it is not prohibited for the same right holder to repeatedly register the same or similar trademark for same/similar goods or services, except those excessive trademark applications obviously exceed reasonable business scope or suspected of malicious applications without the intention of use. We often encounter a type of trademark rejection where in the notification of refusal; it is found that the applicant's prior same or similar trademark cited to bar the registration of their later filed trademark.
The reason behind this is that the applicant, based on commercial needs, has made changes to their name or address. The re-filed trademark application uses a new name or/and address, but the applicant has not promptly recorded the change of name or/and address with the National Intellectual Property Administration, PRC ("CNIPA") for their previously registered trademark under the old name/address. Therefore, the later filed trademarks and the previously registered trademarks will be regarded as applied for by different entities, thus leading to the situation mentioned earlier where the prior trademark bars the subsequent same or similar one.
In such a case, although the applicant can overcome this rejection during the review of refusal stage by recording change of the name/address for their prior trademark, we believe that it is crucial to promptly record the changes with the CNIPA in advance to save time and costs, as well as avoid such rejection situations.
So, if there is no such problem of refection with the applicant's trademark application, can the change recordal be skipped?
The answer is NO.
Article 41 of the Trademark Law: "Where the name or address of registrant or any other registered matter of a registered trademark needs to be modified, an application for modification shall be filed."
Article 49.1 of the Trademark Law: "Where, in using a registered trademark, the trademark registrant changes the registered trademark, the name or address of the registrant, or any other registered matter without approval, the local administrative department for industry and commerce shall order the registrant to make correction within a prescribed time limit; and if the registrant fails to do so within the time limit, the Trademark Office shall cancel the registered trademark."
Article 17 of the Regulations for the Implementation of the Trademark Law: "If the applicant changes its name, address, agent, recipient of documents, or deletes designated goods, it shall go through the procedures for change with the Trademark Office."
Article 3 of General Criteria for Judging Trademark Violations: The general illegal acts referred to in this standard refer to acts that violate the order of trademark management. The following acts shall be deemed as general trademark violations: (5) Violating the provisions of Article 49.1 of the Trademark Law mentioned above.
For trademark rights holders, failing to promptly file changes to their information may have the following impacts:
1. Impacts on the commercial use of the trademark. For instance, when the right holder intends to use the trademark commercially (entering shopping malls or opening stores on various e-commerce platforms), if there is a discrepancy between the entity information of the right holder and the registered trademark information, it may affect the verification process by malls and platforms. This could result in the inability to enter malls/platforms until the information is unified.
2. If not recorded in a timely manner, it may involve general trademark violations.
In conclusion, recording change of name or/and address cannot be selectively ignored. In accordance with the requirements of laws and regulations, recording the change of name or/and address is the fastest and most economically effective way to solve problems and avoid the emergence of new ones. It is worth noting that while the applicant changes the name or/and address for their national trademark applications/registration, they should also apply for changes to their Madrid international registrations extended in China.
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.
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