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, reminiscent of functions, oppositions, and cancellations, are usually not consolidated, wreaking all kinds of havoc for manufacturers. This though the Trademark Legislation has provisions that permit for such consolidation to happen below some circumstances.

Let’s start by illustrating the issue to be addressed by way of efficient consolidation of trademark actions. Think about that you simply wish to register the trademark ABC, which you have got been utilizing in your items for years in the USA and in different international locations. Because it seems, the ABC mark was registered in China 5 years in the past by China Co. Nonetheless, China Co. has by no means used the trademark, making it weak to a non-use cancellation (NUC) request.

You go forward and file an NUC request in opposition to 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 nearly actually be examined comparatively shortly (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 below such circumstances would make quite a lot of sense. If CNIPA discovered that the NUC request has advantage and canceled China Co.’s registration, CNIPA may then proceed with its examination of your trademark utility – with out contemplating China Co.’s registration, since it might have been cancelled for non-use. Alternatively, if CNIPA rejected the NUC request, it may proceed to look at your utility, and reject it due to China Co.’s prior proper.

However that’s not the best way it presently works, which is why we name for efficient avenues to hunt consolidation of trademark actions. Within the state of affairs described above, CNIPA would nearly actually contemplate your trademark utility and NUC request individually (even if you happen to requested for consolidation), which in follow 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 potential for consolidating actions can be welcomed.

Wait, you could 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 strategy is that another person would possibly file an utility for ABC within the interim. And there not being a previous utility filed by you, that utility could have a senior proper.

Contemplate a doable state of affairs that may happen if you happen to filed an NUC request in opposition to 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 harm, if CNIPA grants the NUC request that you bankrolled and cancels China Co.’s registration, it’s Zhongguo Co. that stands to learn, not you. Because of your profitable NUC request, the trail could 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 won’t be weak to an NUC motion for not less than three years – and that’s assuming they don’t the truth is use the mark.

It might be that Zhongguo Co. is said 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 accredited). Or maybe Zhongguo Co. took discover of the truth that somebody filed an NUC request in opposition to China Co’s mark and figured it was a helpful mark. Perhaps they’d been coveting the mark, and figured that sooner or later you would possibly attempt to cancel China Co.’s mark, provided that it’s a mark you utilize in different international locations. Or it may 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 tackle this problem.

To keep away from points, manufacturers will typically file multiple trademark utility whereas they watch for an motion in opposition to a blocking mark to be determined. On this approach, they be sure that they’re all the time first in line. Nonetheless, that is unnecessarily wasteful. It might make way more sense for CNIPA to permit trademark functions and cancellation actions in opposition to conflicting marks to be consolidated (which below some circumstances is already permitted by the Trademark Legislation). This could be simple to perform, plus CNIPA may contemplate 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 in opposition to emblems cited in a CNIPA refusal – it isn’t all the time doable to determine 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 advise, however their efficient utility can be a begin. On the identical time, Chinese language lawmakers ought to reap the benefits of the revision of the Trademark Legislation that’s presently underway to broaden the procedural autos for events to consolidate actions. Furthermore, they need to set up particular rights to invoke them, moderately than counting on a CNIPA discretion that not often delivers constructive outcomes for events looking for redress in opposition to unhealthy religion actors.