When Can a Trademark Be Applied for Following the Cancellation of A Similar Mark in China?

(By Luo Yanjie) Article 46 of the Trademark Law has regulated how long one must wait until a cancelled or revoked trademark can be reapplied for, and yet due to the complexity of the application procedures, in the process of applying, an applicant could easily be confused or mistaken.

Case Summary

On January 13, 2003, Wang Huilan applied for the registration of a design trademark, numbered 3432984, specifically for Class 18, which includes both bags and briefcases. On July 1, 2004, the Trademark Office under the State Administration of Commerce and Industry (the “Trademark Office”) issued a Notice of Trademark Application Refusal, stating that the applied trademark was similar to already registered ones, and thereby Wang Huilan’s application was refused. Dissatisfied with this result, Wang filed a review application with the Trademark Review and Adjudication Board (the “Board”). In July 2007, the reference trademark judged in Wang’s application was cancelled. On August 22, 2007, the Board refused the review application. Ever more dissatisfied with this decision, Wang filed an administrative lawsuit.

After the hearing, the court ruled that the reference trademark was canceled after a decision of the Board, and for this reason, the reference trademark was terminated after the Board’s decision, and that this is not adequate to deny the legitimacy of the decision. Based on this reasoning, the judge refused Wang’s claims.

Lawyer Comments:

The ruling in the case makes sense in understanding Article 46 of the Trademark Law, which reads as follows:

1. Within one year after the cancellation or revocation of a trademark, the same mark cannot be used to apply for registration.

As provided for in Article 46 of the Trademark Law:

“Where a registered trademark has been cancelled or has not been renewed by its expiration, the Trademark Office shall, during one year from the date of the cancellation or removal thereof, approve no application for the registration of a trademark that is identical with or similar to said trademark.”

With that regulation, there comes the so-called “transition period.” Within that period, the trademark office will not approve any others’ application for identical or similar trademarks. During this transition period, the main consideration is that products with the original marks are still circulating in the market, and in order to avoid any consumer confusion, the trademark office will not approve an application for registration of a similar trademark. However, it shall be noted that if the trademark is revoked for lack of use for a period of three years, then this regulation does not apply. The main reason is that the trademark revoked in such a situation has not been used continuously for three years, and the risk of consumer confusion is considerably lower. However, in this case, the trademark involved was cancelled for no renewal after its expiration instead of lack of use for the three-year period. Because of this, the Board’s decision following the mark’s revocation is without question, and conforms to the relevant regulation in the law.

2. When is the best time to apply for a trademark after it has been revoked or cancelled?

On the other hand, we would like to note that despite the Board’s decision being legally sound, when the administrative lawsuit occurred, a period of more than one year had already passed. As shown in the final decision, in an administrative lawsuit, the court will not determine the validity of the application itself, because the administrative lawsuit is filed only to consider whether the board’s decision was done with a sound legal basis. Because of this, the best time to file is from the very beginning of the application period; any undue delay could affect the ultimate outcome of a trademark registration following a revocation or cancellation.

The one-year term in the Trademark Law is also known as the examination period, and according to the law, Article 46 reads that the Board will “not approve” instead of “not accept.” For legislative purposes, the article is intended to avoid and alleviate confusion among consumers with respect to the newer and older trademarks. But before examination, the new trademark is considered “unapproved,” which is essentially the same as an unregistered trademark, and therefore it is not necessary to limit it. Considering the time required for trademark examination currently, it is more feasible for the new trademark applicant to file an application for registration within 3-5 months after the cancellation and revocation of the old trademark.

Lawyer Contacts

You Yunting86-21-52134918  youyunting@debund.com/yytbest@gmail.com

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