Fiona R. PENG | Apr 28 2021

After a registration becomes invalid, could a later filed identical/ similar mark mature into a registration smoothly? In China, there is a one-year quarantine period described in Article 50 of the Chinese Trademark Law that any identical or similar trademarks shall not be approved within one year after a registration was expired, canceled, or invalidated.

The purpose is to make sure the trademark registrants have enough time to withdraw their trademarks from the market and to prevent any potential confusion about the source of goods among consumers.

There's one exception, though, that the registration has been canceled by non-use cancellation. As the goods or services have not existed in the market for three consecutive years, the legislative purpose of the "one-year quarantine period" in Article 50 has been satisfied. Therefore, the above regulation will not apply to such invalid marks.

If the new application is filed by the same registrant(s), it will not be hindered by their old registration(s).

In recent practice, we notice that the one-year quarantine period seems not applied to some cases that are under the circumstances above. In September 2020, we received a positive invalidation decision which decided the prior registration shall be invalidated because the trademark was filed in bad faith. The trademark holder did not appeal and the prior registration was officially declared invalid in January 2021. According to Article 50 of the Trademark Law of the People’s Republic of China, our client’s mark should be refused from registration until the one-year quarantine is over. However, shortly after the prior registration became invalid, our client’s application was approved for publication in February 2021.

We suppose the Trademark Office makes this exception to simplify the procedures. The dead prior registration is the only obstacle that hinders the client’s mark from registration. If this undesirable invalid registration still hinders the righteous holder to obtain trademark right in China, the one-year quarantine period would be a waste of process, and may not be in the line with the principle of justice.

Legal basis:
Article 50 of the Trademark Law of the People’s Republic of China Within one year from the time where a registered trademark is canceled or declared invalid, or is not renewed upon the expiry of its validity period, the trademark office shall not approve any application for registration of a trademark identical with or similar to the aforesaid trademark.