Consolidation of Trademark Actions – Harris Bricken Sliwoski LLP

Consolidation of trademark actions is a much-needed procedural avenue in China, one that will make the nation’s trademark system extra environment friendly and fairer. Actions that concern the identical trademark, comparable to purposes, oppositions, and cancellations, are usually not consolidated, wreaking all types of havoc for manufacturers. This despite the fact that 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 via efficient consolidation of trademark actions. Think about that you simply need to register the trademark ABC, which you have got been utilizing in your items for years in the USA and in different nations. 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 susceptible 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 individual utility to register ABC. The issue is that, whereas your utility will virtually actually 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 in all probability not be thought of till August or September. That signifies that, on the time your trademark utility is examined, China Co.’s registration for ABC will stay legitimate and block your individual utility.

Consolidation of your trademark utility and the NUC request below such circumstances would make a whole lot 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 might have been cancelled for non-use. Then again, 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 way in which 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 virtually actually contemplate your trademark utility and NUC request individually (even should you requested for consolidation), which in apply will imply that your trademark utility will probably be denied, requiring you to file a brand new utility should you nonetheless need to register your trademark. See China Trademark Cancellations: Technique and Timing for additional dialogue of those points and why the potential of consolidating actions could be welcomed.

Wait, you is perhaps considering. 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 would possibly 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.

Think about a attainable state of affairs that will happen should you filed an NUC request in opposition to China Co.’s ABC registration however did not accompany it with a trademark utility of your individual to register ABC, as you need 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. Because of 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 at the very least three years – and that’s assuming they don’t actually use the mark.

It could 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, in all probability wouldn’t get accepted). 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 worthwhile mark. Possibly they’d been coveting the mark, and figured that in some unspecified time in the future you would possibly 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 deal with this subject.

To keep away from points, manufacturers will typically file a couple of trademark utility whereas they look forward to an motion in opposition to a blocking mark to be determined. On this manner, they make sure that they’re at all times first in line. Nonetheless, that is unnecessarily wasteful. It will make much more sense for CNIPA to permit trademark purposes and cancellation actions in opposition to conflicting marks to be consolidated (which below some circumstances is already permitted by the Trademark Legislation). This might be simple to perform, plus CNIPA might contemplate levying consolidation charges that will 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 logos 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 could be a begin. On the similar time, Chinese language lawmakers ought to reap the benefits of the revision of the Trademark Legislation that’s presently underway to develop the procedural automobiles for events to consolidate actions. Furthermore, they need to set up particular rights to invoke them, reasonably than counting on a CNIPA discretion that not often delivers constructive outcomes for events searching for redress in opposition to dangerous religion actors.