(By You Yunting) Earlier in November, China’s Trademark Office announced canceling Burberry’s trademark of the “Haymarket Check” in China, known as iconic tan, black and red tartan (the “disputed trademark”), under Class 18 for packaging and bags because Burberry had not even used the registered trademark for over three years in China by the media.
A Chinese bag and apparel maker Polo Santa Roberta, who had disputes with Burberry for many years, filed an application with the China’s Trademark Office for revoking the disputed trademark that Burberry had not used for over three years. The State Trademark Office decided to revoke Burberry’s trademark due to inadequate evidence from Burberry after consideration, but Burberry applied for review with the Trademark Review and Adjudication Board, triggering heated debates in China.
Considering many enterprises are always registering many trademarks under different classes because of rush registration and serious trademark squatting in China, many registered trademarks, which are not the major category for registration, are facing legal risks for being cancelled by the Trademark Office pursuant to the Trademark Law stipulating that the Trademark Office shall cancel the registered trademark in case that a trademark owner commits ceasing to use for three consecutive years.
1. Legal basis
The legal basis for canceling a registered trademark is Article 44 of the Trademark Law providing that in the event that a trademark owner commits ceasing to use the registered trademark for three consecutive years, the Trademark Office shall cancel the registered trademark.
2. Required documents
If one requires canceling a registered trademark based on stopping using for three consecutive years, it is so easily that the applicant just submit a copy of Business License if any, or a copy of Identity Card (a foreign shall submit a copy of his passport and its Chinese translated version) and two original documents of Power of Attorney with signature or seal of the applicant.
At the same time, the respondent also shall provide afore-mentioned documents the same as the applicant, and furthermore submit a defense response, proving a trademark registrant’s use of the registered trademark in 3 consecutive years. Any document submitted must be the original, or the notarized copy as evidences.
3. Accepting institution
An accepting institution of canceling a registered trademark ceasing to use for three consecutive years shall be Trademark Office pursuant to the Trademark Law, but the decision of the Trademark Office is not a final determination. The party that is dissatisfied with the decision of the Trademark Office may apply to the Trademark Review and Adjudication Board for review. In case the party is dissatisfied with the decision of the Trademark Review and Adjudication Board, the party may institute legal proceedings with the People’s Court. In China, there are two trials in this case which will be heard by the Beijing No.1 Intermediate People’s Court of first instance and Beijing Higher People’s Court of second instance.
4. Processing time
Analyzing the reviewing times of the Trademark Office, the processing time for canceling a registered trademark without use in 3 consecutive years will be in the period of two years.
5. Justification for not using the registered trademark:
i). Force majeure
ii). Policy limitation
iii). Bankruptcy and liquidation, or
iv). Other objective reasons