Consolidation of Trademark Actions – Harris Bricken Sliwoski LLP
Consolidation of trademark actions is a much-needed procedural avenue in China, one that may make the nation’s trademark system extra environment friendly and fairer. Actions that concern the identical trademark, akin to purposes, oppositions, and cancellations, are usually not consolidated, wreaking all types of havoc for manufacturers. This regardless that the Trademark Legislation has provisions that enable for such consolidation to happen beneath some circumstances.
Let’s start by illustrating the issue to be addressed by efficient consolidation of trademark actions. Think about that you just wish to register the trademark ABC, which you’ve got been utilizing in your items for years in america and in different nations. Because it seems, the ABC mark was registered in China 5 years in the past by China Co. Nevertheless, China Co. has by no means used the trademark, making it susceptible to a non-use cancellation (NUC) request.
You go forward and file an NUC request towards China Co.’s registration in January. On the identical day, you file your personal utility to register ABC. The issue is that, whereas your utility will virtually definitely be examined comparatively rapidly (maybe as early as April, given the China Nationwide Mental Property Administration’s (CNIPA) present rocket docket), the NUC request will most likely not be thought-about till August or September. That implies that, on the time your trademark utility is examined, China Co.’s registration for ABC will stay legitimate and block your personal utility.
Consolidation of your trademark utility and the NUC request beneath such circumstances would make a number of sense. If CNIPA discovered that the NUC request has benefit and canceled China Co.’s registration, CNIPA might then proceed with its examination of your trademark utility – with out contemplating China Co.’s registration, since it could have been cancelled for non-use. Alternatively, if CNIPA rejected the NUC request, it might proceed to look at your utility, and reject it due to China Co.’s prior proper.
However that’s not the best way it at the moment works, which is why we name for efficient avenues to hunt consolidation of trademark actions. Within the situation described above, CNIPA would virtually definitely take into account your trademark utility and NUC request individually (even if you happen to requested for consolidation), which in apply will imply that your trademark utility shall be denied, requiring you to file a brand new utility if you happen to nonetheless wish to register your trademark. See China Trademark Cancellations: Technique and Timing for additional dialogue of those points and why the opportunity of consolidating actions can be welcomed.
Wait, you is likely to be pondering. Why not simply file the NUC request first and wait to see if it’s granted earlier than submitting the trademark utility? The issue with that method is that another person may file an utility for ABC within the interim. And there not being a previous utility filed by you, that utility may have a senior proper.
Take into account a attainable situation that may happen if you happen to filed an NUC request towards China Co.’s ABC registration however did not accompany it with a trademark utility of your personal to register ABC, as you wish to wait and see what occurs with the NUC motion. In October, whereas nonetheless ready to listen to from CNIPA concerning the NUC request, a Zhongguo Co. information an utility to register ABC. At that time, Zhongguo Co.’s utility is subsequent in line after the unique China Co. registration. Including insult to damage, if CNIPA grants the NUC request that you bankrolled and cancels China Co.’s registration, it’s Zhongguo Co. that stands to profit, not you. Due to your profitable NUC request, the trail may have been cleared for approval of Zhongguo Co.’s registration utility for the ABC trademark. What’s worse, versus China Co.’s, Zhongguo Co.’s new registration is not going to be susceptible to an NUC motion for a minimum of three years – and that’s assuming they don’t actually use the mark.
It might be that Zhongguo Co. is expounded to China Co. and doing its bidding by submitting a brand new utility to register ABC (which, if China Co. filed themselves, most likely wouldn’t get authorised). Or maybe Zhongguo Co. took discover of the truth that somebody filed an NUC request towards China Co’s mark and figured it was a useful mark. Possibly that they had been coveting the mark, and figured that in some unspecified time in the future you may attempt to cancel China Co.’s mark, provided that it’s a mark you employ in different nations. Or it might even be the case that it’s only a coincidence that Zhongguo Co. utilized on the proper second to take benefit. It doesn’t matter. The underside line is that now there’s a new impediment between you and registration of the ABC trademark. Consolidation of trademark actions would assist handle this challenge.
To keep away from points, manufacturers will typically file a couple of trademark utility whereas they look forward to an motion towards a blocking mark to be determined. On this means, they be certain that they’re at all times first in line. Nevertheless, that is unnecessarily wasteful. It will make much more sense for CNIPA to permit trademark purposes and cancellation actions towards conflicting marks to be consolidated (which beneath some circumstances is already permitted by the Trademark Legislation). This may be simple to perform, plus CNIPA might take into account levying consolidation charges that may make up for any misplaced income from utility charges. Trademark candidates must also be allowed to remain their utility whereas they prosecute cancellation actions towards emblems cited in a CNIPA refusal – it isn’t at all times attainable to establish which marks will current an impediment to registration of your marks on the time you file an utility.
The provisions within the present Trademark Legislation don’t go so far as what we propose, however their efficient utility can be a begin. On the similar time, Chinese language lawmakers ought to reap the benefits of the revision of the Trademark Legislation that’s at the moment underway to increase the procedural automobiles for events to consolidate actions. Furthermore, they need to set up particular rights to invoke them, somewhat than counting on a CNIPA discretion that hardly ever delivers constructive outcomes for events in search of redress towards dangerous religion actors.