In some cases, the China Intellectual Property Administration ("CNIPA") cites an invalid mark to reject a trademark application according to Article 50 of China Trademark Law. This paper will briefly introduce the applicable situations of Article 50 of China Trademark Law.
According to Article 50 of the Trademark Law, "if a registered trademark is cancelled, declared invalid or subject to no renewal upon expiration of the period of validity, the Trademark Office shall not approve any application for the registration of a trademark that is identical with or similar to the said trademark within one year as of the day of the invalidation or cancellation.
In principle, if the previously registered trademark has been cancelled, declared invalid or not renewed upon expiration, it should not bar the registration of subsequent trademarks. However, because the goodwill of the previously registered trademark that have been invalidated may still circulate in the market for a period of time, the influence of its trademark and goodwill still exist in the relevant public during this period. Thus, the existence of this Article 50 of Trademark Law is to avoid the confusion caused by the registration and use of later same or similar trademarks.
However, should all the trademarks that be revoked, declared invalid or not renewed at the expiration of the period be given a one-year isolation period? There are exceptions.
Usually, this article will be cited by CNIPA in rejection of a later filed same or similar mark over similar goods/services when the prior mark meets any of the following situations:
- No renewal upon expiration: If a registered trademark needs to be used continuously upon expiration, the trademark registrant shall go through the renewal procedure in accordance with the regulations within twelve months before expiration; if it is not renewed timely during this period, the renewal application can still be filed during the six months after expiration. If no renewal application is filed finally, the registered trademark will shall be cancelled.
- Withdrawal by the trademark registrant: If the registrant decides to abandon its registration, he may file the withdrawal application.
- Cancelled through invalidation action due to existence of prior similar marks.
There are still other situations that are not suitable for the application of the provisions of Article 50:
- Trademark registration that cancelled through non-use cancellation. The main reason is that, if a trademark that has been cancelled due to non-use for three consecutive years, it has not been used in the past three years, and has actually met the one-year isolation period.
- Trademark registration that has been cancelled because it has become the general name of the goods. If it is found that it lacks distinctive features and is rejected, it is not necessary to apply the provisions of Article 50.
- Trademark registration that has been invalidated by Article 4 of the Trademark Law, in the new trademark law implemented in 2019. According to Article 4 of Trademark Law, "the application for registration of a malicious trademark that is not for use should be rejected". If the previously registered trademark is invalidated by Article 4, it is determined that the trademark is not for the purpose of use, and there is no likelihood of confusion to be caused with the later same or similar trademark.
- Trademark registration that has been invalidated as it is found to be a malicious registration or copy of other's well-known trademark according to Articles 13, 15, and 32 of Trademark Law.
To avoid any citations of prior similar marks, it is recommended that the applicant files a trademark application for registration immediately after the trademark is chosen, in order to obtain an earlier filing date. It is also important to conduct trademark search before filing in order to better evaluate the availability for registration and use. You can conduct trademark search in China through Kangxin IP Platform (https://eservice.kangxin.com).
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.