When entering a market as competitive as China, the issue of trademark infringement is still a problem. This problem particularly affects companies that have lost the rights to their trademark or failed to register it in advance.
Losing rights to a trademark is actually quite simple. According to the “first to file” principle, the first person to apply for protection of a trade mark is entitled to it if he or she is successful in the application process. This means that if you are not quicker, your distributor or the company that manufactures for you under your brand name can apply for the mark themselves. Of course, you have the chance to get the trademark back (though not the guarantee), but this requires more effort than a simple application. One method is to cancel the protection of an existing trademark.
At Trademark Partners, we help legitimate trademark owners draft and file an application to cancel a trademark and regain their rights to use the mark.
Trademark invalidation is a legal procedure to remove the protection of a trademark. It is carried out by the Chinese Trademark Office at the request of the interested party, who submits the necessary documentation with relevant evidence to prove that the requested trademark invalidity has been granted to their loss and that the trademark registrant has acted in bad faith.
An application for invalidation of a trademark can be filed by anyone who believes that the trademark should not have been granted protection because, for example, it infringes previously acquired rights in the same or a similar trademark. This is the case if the trademark was registered by a third party acting in bad faith and the applicant has credible evidence to prove this. Indeed, the applicant must prove to the relevant Office that the registrant of the mark was already fully aware at the time that he was applying for protection of a mark which he did not actually own.
At Trademark Partners, we understand that every situation is different and that trademark invalidation proceedings may require slightly different steps. Our many years of experience mean that we are well prepared for a variety of scenarios – in each case, we offer professional advice and assistance in the trademark invalidation process in China.
If your trademark has been applied for protection in China by an unauthorised person and has been provisionally approved by the China Trademark Office, you can file an opposition within three months from the date of publication of this information, supported by appropriate justification and evidence. However, if the trademark has already been registered, you can apply for its invalidation.
The whole process is easier if the person who filed your trademark was a known business partner. It is slightly more difficult to prove the legitimacy of a request for invalidity if the registration was made by a person with whom you have no business relationship. This does not in any way reduce your chances of a successful cancellation, but it may involve a longer process, more evidence and higher costs. This is because the cost of preparing and filing a cancellation application depends primarily on the complexity of the case, the number of classes in which the mark is registered and the volume of documents that need to be translated. You may also need to legalise some of the evidence before submitting it to the Office.
Yes, you can invalidate a trademark registration in China as long as you can prove that you have grounds to do so. This could be, for example, bad faith on the part of a registrant who, in full knowledge, has filed a trademark application that is not his or her own.
The evidence depends on the grounds for invalidation. For example, if you want to invalidate a trademark because someone stole it from you, you need to prove that situation and the bad faith of the person who stole it from you.
In China, it can take from eight to several months to process an application for invalidation.
No. The decision to invalidate can be appealed by either party. If you need to do this, you will need the help of a professional representative such as Trademark Partners. Let us know, we know how to help.
Your trademark is not automatically invalidated if someone files a invalidation request. You have the right to defend yourself. You must respond to the Chinese Trademark Office (CNIPA) as appropriate, depending on the allegations in the invalidation application. If you do so successfully, you will be defending your trademark. You will need to hire a professional representative such as Trademark Partners. Talk to us, we know how to help.
Invalidation and cancellation of a trademark are two different procedures. Invalidation of a mark is the withdrawal of protection for a mark that should not have been granted, which must be proven in the application for invalidation. Cancellation of a trademark is the termination of protection due to non-use of the trademark for a certain period of time (in China, it is a period of three years).
Yes, this is possible. It is necessary to apply for the invalidation of such a registration.
To invalidate a trademark, a reasoned application must be filed with the China Trademark Office (CNIPA). The application can only be filed by a local representative, such as those working with Trademark Partners. Talk to us, we know how to help.
An application for invalidation requires careful argumentation. It may include procedural errors in the granting of protection or evidence of bad faith on the part of the person in whose name it is registered.
Yes, you will not prepare the application and grounds for filing with the China Trademark Office (CNIPA) yourself. These documents can only be filed by a local representative, such as those working with Trademark Partners. Let us know how we can help.
The invalidation of a trade mark becomes effective as soon as the order of invalidation has been pronounced and no appeal has been filed by the interested party within the period prescribed by law.
Costs can vary depending on the complexity of the case, the amount of evidence to be gathered and the number of documents to be translated. It is certainly more than EUR 1100-1200 per application for a trademark in one class.
In China, the process of processing an annulment application can take from eight to even several months.
Any interested party may make such a request, but must show grounds.
No, nothing is automatic. Each application submitted is individually examined by the office. A strong justification of the application is the key to success, which does not change the fact that the trademark invalidation only takes effect after the relevant verdict of the China Trademark Office (CNIPA) and the absence of an appeal by the interested party within the statutory period.
No. When you apply for a invalidation of a trademark, you declare number under which the trademark is registered. This means that you indicate exactly which mark in which class it relates to. The decision to declare a mark invalid will therefore only relate to the mark in the class in question.
No, invalidation request only applies to registered trademarks.
If you want to invalidate a trademark because, for example, someone stole it from you, you will have to prove that situation and the bad faith of the person who stole it from you. You will probably have to prove that you have done business with that company or person in the past, among others.
An invalidation that becomes final renders the licence agreement irrelevant in this respect. The parties should familiarise themselves with the resulting legal situation and its consequences.
The trademark loses legal protection and can be reapplied for protection after a grace period.
Yes, this is one way of resolving trademark disputes.
No. In China, non-use of a trademark for at least three years is grounds for a different procedure – trademark cancellation. Invalidation is formally a different procedure and requires a different application.
You can then consider appealing the decision or submitting a new application with additional evidence.
No. The decision to invalidate can be appealed by either party. If you need to do this, you will need the help of a professional representative, such as one of cooperating with Trademark Partners. Let us know, we know how to help.
Yes. The decision to invalidate can be appealed by either party. If you need to do this, you will need the help of a professional representative, such as one of cooperating with Trademark Partners. Let us know, we know how to help.
Yes, information about the invalidation is published by the office in a publicly accessible bulletin.