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Changes to the address of trademark cannot be spared, otherwise the consequences will be severe
11.07.2022

Changes to the address of trademark cannot be spared, otherwise the consequences will be severe

In many instances, by reason of the costs and troubles, enterprises would neglect making changes to their registered trademarks in accordance with the law when their name and addresses have changed. Neglecting what was supposed to be done would lead to devastating consequences.

A successful trademark application is merely the first step in trademark operation, the preciseness of trademark managements dictates whether the trademark could operate efficiently in the future.

When some applicants change the address of their main business license, which causes inconsistencies with what was registered; they never inform their agencies who helped with their trademark registrations, nor did they complete the corresponding registration procedures at the Trademark Office of China in a timely manner. As a result, such applicants have resulted in significant losses. When the name of trademark owner and addresses of the trademark does not correspond to the changes that occurred within the company, precisely what adverse impact would be caused?

1. Impact on Trademark Assignment and Authorisation

When the entity or individual is undergoing trademark assignments or authorisations, the Trademark Office of China will verify whether the information of the trademark is consistent with the address and name of the business license. If any inconsistencies are found, the Trademark Office can reject the trademark application. Any such changes will have to be made prior entering into any trademark assignment and authorisation agreements.

2. Probability of Trademark Withdrawal

Prima facie, if a registered trademark has not been used consecutively for three years, any individual or entity will enjoy the right to request the withdrawal of the trademark. If the Trademark Office of China receives such application, the Office will mail the notice to the trademark owner. Given the notice is mailed to the address provided by the trademark registrant, if the registrant had move, failed to receive such notice and thus failed to provide supporting evidence of trademark usage within the said time limit; the Trademark Office would publish an article to withdraw the registered trademark completely.

3. Impact on Operating Businesses at Shopping Centres or E-Businesses

Generally, when starting businesses at shopping centres or e-businesses, there will be a verification of trademark information and the names and addresses within the operating licenses. If any inconsistencies are found, it will be impossible for such businesses to operate at shopping centres or internet shopping malls. To illustrate, there was an apparel company, who intended to open a store at a shopping mall; nonetheless, given it failed to update the change in address in the registered trademark, inconsistency was found during the verification. As a result, a series of plans and promotions were unable to proceed and thus causing decline in performance because it took five to seven months to update the address of the registered trademark.

4. Impact on the renewal of trademark in the future

A trademark’s term of use lasts for ten years. If one wish to continue using the trademark ten years after the first registration, renewal applications need to be made. There will be a verification of trademark information during renewal procedures. If inconsistencies in relation to the name and address are found when the trademark’s term of use is drawing near, the renewal process will be more problematic and time-consuming, opening to the possibility that the trademark cannot be renewed. Once the trademark has expired, re-registrations are not guaranteed if someone applies in advanced. If that happens, there is no choice but to transfer others the brand that you have devoted blood, sweat and tears into managing.

In practice, since trademark applicants always think all is well in the world so long as their applications have been successful, not a lot of them would prioritise updating changes in their registered trademarks. Indeed, changes to the address of trademark is a small but the most easily overlooked detail. Due to the negligence of the trademark owner, a brand that he has worked so hard for so many years, that is worth hundreds of thousands or even millions, may be easily taken away by others.

Benny Kong & Tsai © 2023
 

Benny Kong & Tsai, Solicitors

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