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When will a trademark be invalidated?

When will a trademark be invalidated?

Registered trademarks may be rejected and revoked. These procedures are familiar in the current trademark registration and use process. But what exactly is invalidation of trademark? In China, what does it mean to obtain a trademark registration certificate, and get it declared invalid later? It seems self-contradictory for the state to declare the trademark invalid after approving it. This article explains the reasons behind.

1. The Trademark Law stipulates: “Where a trademark registration violates the provisions of Articles 10, 11, and 12 of this Law, or the registration of a trademark was acquired by fraud or any other improper means, the Trademark Office shall invalidate the registration at issue. Any organization or individual may request that the Trademark Review and Adjudication Board make a ruling to invalidate such a registered trademark.” To summarize, invalidation of a trademark satisfies the following conditions.

(1) Absolute refusal of registration: Registered trademarks meeting the following four conditions will be invalidated by the Trademark Office; other units or individuals may request the Trademark Review and Adjudication Board (TRAB) to declare invalidity.
1. Violation of Article 10 of the Trademark Law:
2. Violation of Article 11 of the Trademark Law:
3. Violation of Article 12 of the Trademark Law:
4. Registered by deception or other improper means (such as fabrication, concealment of facts, forged materials, etc.)

(2) Relative refusal of registration: For registered trademark meeting the following seven situations, within 5 years from the date of registration of the trademark, the prior right holders or interested parties may request the TRAB to declare the registered trademark invalid. For malicious registrations, well-known trademark owners are not subject to a five-year time limit.

1. Violation of the provisions of the Trademark Law, infringement of unregistered well-known trademarks:
2. Violation of the provisions of the Trademark Law, infringement of registered well-known trademarks:
3. Violation of the provisions of the Trademark Law, squatting unregistered trademarks due to business relations; squatting the trademark of the client:
4. In violation of the provisions of the Trademark Law, trademarks containing false geographical indications:
5. Violation of the provisions of the Trademark Law, being same or similar to trademarks registered or preliminary approved:
6. Violation of the provisions of the Trademark Law, violation of the principle of application first:
7. Violation of the provisions of the Trademark Law, infringement of prior rights; maliciously squatting well-known unregistered trademarks.

In summary, when the TRAB, prior rights holders and interested parties believe that the trademarks that have been successfully registered have violated the above relative or absolute prohibition clauses, the Trademark Office may declare invalidity according to the authority, and the first right holder or interested party may according to relevant provisions of the law make a request for invalidation to the Trademark Office. Since the Trademark Office in China processes a large amount of trademark registrations, cancellations and other specific trademark administrative actions every day, the applicants who actually perform the trademark invalidation declaration are always the prior rights holders or interested parties.

2. A real case is cited as follows to explain in detail the circumstances under which the trademark invalidation declaration can be made.

A Hong Kong company, A, has registered a trademark B in the 9th category of 0901, 0907, 0908, 0913, and 0922 in 2006 and 2012 respectively. As the business developed, A wanted to register the trademark B in the 9th category 0912. It found out that a squatter C squatted the trademark B in 0912 in 2016. Then, C offered to sell trademark to A at a high price. Subsequently, A filed a request to the TRAB to invalidate C’s trademark. In the request for invalidation, A not only provided evidence that C had offered to sell the successfully registered trademark to A at a high price, but also that C, as an individual, had registered for more than 1,300 trademarks, including “Meizu”, “MACBOOK”, “macbookair” etc., which are similar or same with other well-known products. The TRAB believes that C’s behavior had exceeded the normal production and operation needs, with obvious copying, plagiarism and imitation of others’ prior trademarks. Such cybersquatting behaviors will not only lead to consumers’ misunderstanding as to sources of products, but they also disrupt the normal order of trademark registration management and damage the market order of fair competition. It has constituted the provisions of the first paragraph of Article 44 of the Trademark Law, which is the situation of “acquiring registration by other improper means”. C’s squatted trademarks are invalidated.

Therefore, don’t panic when you find out someone has squatted your trademark. We can use the following points to determine whether the trademark can be declared invalid:
1. Whether it constitutes an approximate trademark on a similar trademark;
2. Whether there are malicious cybersquatting and trademark peddling behavior:
3. Whether the squatter possesses a large number of registered trademarks;
4. Whether it violates other situations mentioned in the previous page.
If any of the above conditions is met, a request for invalidation of the trademark can be filed.

Here concludes a detailed explanation of the conditions for invalidation of the trademark. In general, declaration of invalidity is a way to defend trademarks against the act of maliciously squatting on the trademarks of others. It is an effective means that Trademark Law grants to prior trademark owners for protection of their trademarks. In real life situations, many companies have used trademark invalidation as a weapon and took the initiative to protect their brands.

Benny Kong & Tsai © 2023

Benny Kong & Tsai, Solicitors

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