Longer Intellectual Property IP

24/07/2017

Re.: How to avoid a registered trademark being canceled on grounds of non-use in China

1. In the current examination practice in China, the applicant shall not bear any burden of proof when filing a Request for Cancellation of registration grounded on non-use for a period of three consecutive years without any justified cause. The applicants in China can just file the request for cancellation without doing any investigation or providing any evidence.

Therefore, filing a Request for Cancellation of a registered trademark grounded on non-use for a period of three consecutive years without any justified cause has become a preferred weapon used by the accused infringer to respond to lawsuits in most trademark infringement lawsuits in China.
2. For the current cancellation requests on the ground of non-use in China, most trademark registrants shall bear the obligation to submit use evidence of his trademark during the period immediately preceding the filing date of the cancellation request.
The requirements for submitting use evidences of a registered trademark are that the registrant shall submit ample evidence of use proving the goods and/or services bearing the registered trademark have been publically, consecutively and commercially put into the market in China and can be identified by related consumers.
The requirements above also apply to the licensee where a license agreement to use the registered trademark has been reached between the owner and the licensee.
3.How to avoid the registered trademark not used in China from being canceled
There are two strategies prevalently adopted by registrants to fight against the cancellation action on the ground of non-use for three consecutive years without justified causes:
a. Consecutive application for registration
In other words, the applicant may file, every two years, a new trademark application for the identical mark covering identical goods as the registered trademark which has not been used so that the new trademark application may be approved even if the registered trademark is eventually canceled.
Although, the above is an effective counter measure with minimum costs, certain flaws do exist, namely, the new trademark application for registration may still be refused by China Trademark Office due to the principle of “individual examination for each case”.
b. Acquire valid use evidence of the trademark through true distribution
As stated in Part (III), evidence of use shall prove the goods and/or services bearing the registered trademark have been publically, consecutively and commercially put into the market in China and can be identified and purchased by related consumers.

29/06/2017

Latest Development on CTMO’s Online Filing System

　Since the operation of CTMO’s new online filing system from March 10, 2017, CTMO’s such new online filing system now opens more gateways for filings related to trademark matters to the public from June 19, 2017.

As a result, the following 23 types of filings as well as required documents may be filed electronically via such online filing system:

1.Application for Registration;
2. Withdrawal of registration application;
3.Change of name/address of applicant/registrant & Change of regulation/member list of collective mark/certification mark;
4. Withdrawal of change of name/address of applicant/registrant & Change of regulation/member list of collective mark/certification mark;
5. Change of agent/recipient;
6. Withdrawal of change of agent/recipient;
7. Limitation of goods/services;
8. Withdrawal of limitation of goods/services;
9. Assignment/Transfer of application/registration;
10. Withdrawal of assignment/transfer of application/registration;
11. Renewal of registration;
12. Withdrawal of renewal of registration;
13. Removal of registration;
14. Withdrawal of removal of registration;
15. Recordal of trademark license;
16. Withdrawal of recordal of trademark license;
17. Recordal of change of licensor/licensee;
18. Termination of recordal of license;
19. Issuance of priority certification documents;
20. Obtaining certified copies of registration;
21. Correction of application/registration;
22. Re-issuance of registration certificate;
23. Re-issuance of certification of Change/Assignment/Renewal;

Although the above 23 types of filings as well as relevant documents required may be filed electronically via such online filing system, IP agencies are required by CTMO to guarantee the authenticity of the documents filed via the new online filing system, and CTMO shall be entitled to request IP agencies for required document originals at any time. If no required document originals are supplied within the prescribed time limit, pertinent filings as well as the required documents filed via the online filing system would be deemed invalid.

24/04/2017

In China's trademark system, the basis for deciding whether the goods are similar or identical during examination for trademark applications is different from those adopted in the process of trademark opposition, trademark review, trademark cancellation or litigation.

In the process of examination of the application for trademark registration, The Classification Table for similar Goods and Services is the primary basis for the Trademark Office to determine the similarity of goods, in order to realize the balance between justice and efficiency, which therefore will be the main subject matter of this article...

For more information, please kindly refer to our newsletter at
http://longerip.com/index.php?c=article&id=81

24/04/2017

I. As per the latest notification issued by the CN Government, we are happy to inform you that there has been a major fee reduction as much as by half of their originals for all official fees related to trademark matters at both CTMO (CHINA TRADEMARK OFFICE) and TRAB effective since April 1, 2017.

For example, the official filing fees for a new CN TM application in one class covering 10 items of goods are reduced to the current RMB￥300 from the previous RMB￥600. For easy reference, please refer to our revised fee schedule in the attachment.

II. As per the latest TM Examination Guides
, requirements for a new TM’s distinctiveness have been somewhat lowered to a degree that as long the overall mark is distinctive enough for the public to distinguish one goods/service provider from another, such mark application shall still merit registration at CTMO.

07/02/2017

13/12/2016

I can see Two, any more?

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