Legal basis to nullify an imitated Chinese registered trademark2020年4月1日
China Negative List of Foreign Investment Access 2020 version2020年7月25日
Normally due to prior rights (including prior marks (registered or preliminarily approved marks), copyright, design patent right and other prior rights), your trademark application may got partial or fully rejected by China Trademark Office (CTO), then what can you do?
1. File a trademark nullification application to TRAB
If the prior mark is a pirate mark, within 5 years from the registration date of the pirate mark, you may file an application to nullify the pirate mark to TRAB (Trademark Review and Adjudication Board), if your brand is a well-know brand, then there is no 5-year limits. Within 12 months from the date that filing received, TRAB shall make a decision to nullify or not nullify the pirate mark. Please note CTO and TRAB both are divisions under China National Intellectual Property Administration.
2. File a trademark revocation application to TRAB
If the prior mark is similar to your trademark, in the event that this prior mark registered more than 3 years, and most likely the prior mark was not used in 3 consecutive years inside China mainland, you may file an application to TRAB to revoke the prior mark. Within 9 months from the date that filing received, TRAB shall make a decision to revoke or not revoke the prior mark. Regarding the pirate mark, It is strongly suggest to file a trademark revocation application as well.
3. File a trademark appeal to TRAB
In the meantime you have to file an trademark appeal to TRAB to review the rejected mark within 15 days from the date received the Rejection Notice, to make the Trademark Rejection not come into force. The argument in the filing are:
3.1 Your mark is not similar to the prior mark
3.2 The products or services of your mark used are not similar to the products or services used of the prior mark.
Within 9 months from the date received the filling, TRAB shall make a decision to favor or not favor your appeal.
4. In case TRAB rejected your trademark appeal, then you have the right to appeal to Beijing IP court.
In the event that TRAB favored your Trademark Nullification application or your Trademark Revocation Application to the prior mark, or you have evidences below. Then the Beijing IP court probably favor your appeal.
4.1 Evidences that proving the prior mark owner is your agent or representative.
4.2 Evidences that proving the prior mark owner has contractual or business or other relations with you (including contractual or business negotiation but no deal achieved)
4.3 Other evidences, such as the prior mark damaged your prior rights, your mark is well-know mark and etc.,
This court procedures may take around 2-6 months, sometimes takes 1 year.
5. In the event that Beijing IP court did not favor your appeal, you have right to appeal to Beijing High People’s Court.
This high court procedure may take around 3 months. Please note Beijing people’s high court judgement is binding.
6. In the event that Beijing High People’s Court did not favor your appeal, though its court judgement is binding, you still may appeal to China Supreme People’s Court, actually it is not uncommon to appeal to China Supreme People’s Court, some cases ruled by China Supreme People’s Court has favored the appealer.