China Trademark Appeals

China NNN Agreements and trademarks

One of the most common and best ways to get a rejected China trademark registered is by using an appeal to show the Chinese Trademark Office was wrong to believe some other company rightfully owned the trademark. The below email is an amalgamation of emails our China trademark lawyers have sent to clients, with the trademark names and any other possible identifiers redacted or changed:

I am writing with an update regarding your China trademarks. As a preliminary matter, you should know that the China Trademark Office is somewhat in disarray — in addition to implementing a new trademark law this year, their main computer system was offline for more than six months. Long story short, everything is behind schedule, and some notices are coming out that give the addressees only a few days to respond. With that as prelude, I have bad news and good news regarding your trademark application for “BLANK”:

The bad news is the Chinese Trademark Office (CTMO) rejected your application for “BLANK”, claiming there is a preexisting trademark for “BANC” covering similar goods. We picked this up during the pre-registration screening, but our China trademark lawyers did not flag it as a possible basis for rejection because the difference in pronunciation should have been sufficient to distinguish the two English-language marks. However, the CTMO did not see it that way.

The good news is the owner of the “BANC” trademark is a _______ company that registered “BANC” in all 45 classes, and has no history of having used this trademark for ______, _______, or ________ [our client’s products] in the last three years.  All evidence suggests that if we file a non-use cancellation against this mark, we should be able to cancel it and then register “BLANK”

We therefore advise the following course of action:

1. File a non-use cancellation of the “BANC” trademark, while simultaneously appealing the rejection of the “BLANK” trademark. In an ideal world, the officials adjudicating the appeal would “suspend” the appeal pending the results of the cancellation. Supposedly this is happening with implementation of China’s new trademark law, but it is still unclear how it works in practice. Still, it is worth trying.

2. To gain more certainty, we could also file a new trademark application a little while after filing the non-use cancellation. This would cover the scenario in which the appeal was not suspended pending the results of the non-use cancellation, and you lost the appeal. In that situation, the non-use cancellation would still be decided before the new trademark application gets processed.

3. Given the CTMO’s initial finding, we would not advise filing an appeal solely on the basis that “BLANK” and “BANC” are in fact distinguishable. This would have less than a 50/50 chance of success, whereas an appeal combined with a successful non-use cancellation should have a 90% chance of success, reserving the other 10% for the sheer unpredictability of the China trademark office.

3 responses to “China Trademark Appeals”

  1. In the example above, the non-use did go back for more than three years. Sometimes, if it let’s say goes back for 2.5 years, the best thing to do is to wait another 6 months and then seek a non-use cancellation. As we lawyers so love to say, it really just depends on the specific facts.

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