New weapon for foreign trademark rights holders

Under the current Trademark Law regime, a foreign trademark rights holder, when facing same-class and cross-class pirate registration of trademarks, will often search without success for a solution, as judicial authorities are handcuffed without a base for enforcing the law. The revised Trademark Law brings forth invalidation for the first time and seeks to rein in pirate registration. Through the revision of substantive provisions, it is potentially an effective weapon for foreign trademark rights holders in the protection of their rights.

Invalidation

The concept of “invalidation” under the new law differs from “cancellation”. The significance of invalidation lies in its expressly stating that after a trademark is declared invalid by virtue of not satisfying the statutory conditions for registration, or running counter to the public good, the consequences of the loss of the trademark rights are retroactive, denying the existence of the trademark from the outset. Cancellation, on the other hand, is merely the legal liability borne by the user of the trademark for not correctly using it in accordance with regulations, with the results of cancellation not retroactive. Invalidation better suits the legislative intent of thorough reform.

The new law additionally simplifies the opposition procedure, specifying that if an opposition is found untenable, a registration certificate will be issued, and if the opponent is dissatisfied, his sole option is to request that the Trademark Review and Adjudication Board (TRAB) declare the registered trademark invalid. The price for simplification of the procedure is a reduction in the number of means available for the protection of rights, an outcome that for foreign trademark rights holders leaves decidedly mixed feelings and leaves the advantages and disadvantages undecided.

Jiang Fengtao is a special litigation consultant at Hengdu Law Offices. His contacts: Tel: +86 13911226232; Email: jiangfengtao@jiangfengtao.com

Wang Hua is an attorney at Hengdu Law Offices. Her contacts: Tel: +86 10 57600568; Email: hua.wang@hengdulaw.com