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Calculating the Date: Non-use Cancellation Proceedings |
January 03, 2016 | Hailey H. LIANGWith dramatic increase in number of trademark applications every year, it becomes harder to create a new trademark not in conflict with the prior registered trademarks. Non-use cancellation is one of the frequently used strategies to clear the obstacle.
According to Article 49.2 of the Trademark Law of the PRC, “where a registered trademark is becoming a generic name in a category of approved goods, and the mark has not been used for a period greater than three years without any justifiable reasons, any organization or individual may request that the Trademark Office make a decision to cancel such registered trademark”, any person may file a request for cancellation before the Trademark Office on the ground of the trademark holder’s non-use of the trademark for three consecutive years. Because of the lower cost compared to trademark acquisition and the relatively simpler procedures required by the request, the cancellation proceedings is becoming a popular choice for trademark applicants. However, it is always easier said than done. In practice, the definition of the “three-year period” is complicated.
Generally speaking, this “three-year period” should start from the “actual registration date” identical to the registration date indicated on the trademark certificate and the record in the official website of China Trademark Office. However, there are exceptions. The “actual registration date” and the “registration date” will be different for a trademark which has been through the opposition proceedings. Such discrepancy will also occur for international trademarks designating China. The petition for cancellation will be rejected if the registration date does not meet the requirements for the non-use cancellation.
A. Direct Filing in China1. Straight Forward Registration
Article 66.3 of the Implementing Regulations of the Trademark Law of the PRC
“Any cancellation request filed for the reason of the trademark holder’s non-use of the trademark for three consecutive years should be filed after three years from the date on which the trademark is published after preliminary examination.”
In general cases, the “three-year period” should start from the publication date of the registration (also the registration date).
2. Registration through opposition
The “actual registration date” for registration through opposition should be the date on which the decision on opposition comes into force. Therefore, the timing for filing a petition for cancellation should start from the date on which the decision on opposition goes into effect plus 3 years.
B. International Trademark Designating China1. Straight Forward Registration
Article 49.1 of the Implementing Regulations of the Trademark Law of the PRC
“Any cancellation request against an international trademark registration filed for Article 49.2 of the Trademark Law of the PRC should be filed with the Trademark Office after three years from the date on which the period for issuing a rejection expires.”
Generally speaking, the “three-year period” should start from the date on which the period for issuing a rejection expires.
Many of the applicants or even trademark attorneys may believe that the “international registration date” is the beginning date on which the non-use cancellation could be filed. Although the “international registration date” is the beginning date of the validity period of an international trademark registration, it is not the date on which the exclusive right to use the trademark is established in the designated country/region. According to the Madrid Agreement and the Madrid Protocol, any party to the Agreement or the Protocol should finish the examination of an international trademark application filed through the Madrid system and make a decision on rejection or approval in 12 months (to the parties to the Agreement) or 18 months (to the parties to the Protocol) from the date of notification issued by WIPO. No decision made within this prescribed time limit will be automatically deemed as approval. Thus, the “date on which the period for issuing a rejection expires” should be: the date of notification issued by WIPO plus 12 or 18 months.
In another word, for the international trademark designating China with straight forward proceedings, the “three-year period” should start from the date of notification issued by WIPO plus 12 or 18 months plus 3 years. The date of notification issued by WIPO could be found in the record of WIPO official website.
2. Registration through review/opposition
Article 49.1 of the Implementing Regulations of the Trademark Law of the PRC
“Any cancellation request against an international trademark registration filed for Article 49.2 of the Trademark Law of the PRC should be filed with the Trademark Office after three years from the date on which the decision of approval issued by the Trademark Office or the Trademark Review and Adjudication Board goes into effect if the application is still under the review/opposition proceedings after the period for issuing a rejection expires.”
For the international trademark application designating China through review/opposition proceedings, the “three-year period” should be calculated: the date on which the decision on review/opposition goes into effect plus 3 years.
In conclusion, establishment of the exclusive right to use the trademark for three years is the crucial requirement for filing the petition for non-use cancellation. The timing of the establishment of right will be determined by different elements: if the application is a direct filing Chinese trademark application or an international trademark designating China; and if the application is a straight forward registration or registration through review/opposition.
