Non-Use Cancellation: Defense against Bad-Faith Filings

When a foreign company decides to register its trademark in China, it is not uncommon that the application is rejected by the authorities. The reason: a Chinese company or an individual has already registered the trademark before, with an objective to capitalize on it later. This tactic is known as trademark hijacking, when a Chinese applicant stocks up with multiple trademark registrations and later forces legitimate right owners to purchase the IP rights at a high price. The right owner would then mostly try to file an opposition against the trademark application rejection and at the same time a non-use-cancellation against the hostile trademark – often without success.

Now, China’s Trademark Review and Adjudication Board (TRAB) has signaled better protection possibilities against such bad-faith applications. In certain cases TRAB will give IP right owners more time to take action against blocking registrations by suspending the review of the rejected trademark and opposition. The condition is that filing of the non-use-cancellation pre-dates the application of the original trademark.

Hence, it is crucial for foreign brand owners to conduct a precise research for possible blocking registrations and to eliminate existing obstacles early on. At the same time, Chinese examiners often decide in favor of partial invalidations, when the colliding trademark is attacked only in part of products or product groups and not as the whole registration. This strategy is acceptable in cases where the own trademark is only blocked for some important product groups. In clear cases of infringement and piracy it is of course necessary to try to invalidate the whole trademark.

Picture: “Trump Toilets” – another example of trademark hijacking, Source: South China Morning Post

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