After the applicant filed trademark application, the CNIPA cited the prior registration to reject the applicant's trademark application. While the owner of the prior registration (hereunder referred as "the cited mark") had already been logged off, but no action had been taken against the cited trademark by the owner, the cited trademark was in a status of being unmanaged, unused, and unmaintained. The cited mark does not only bar the normal trademark registration of other companies, but also belong to a state of idle accumulation, causing serious damage to the trademark registration order. With the continuous reduction of trademark resources, it will cause significant obstacles to future trademark applicants and will not be conducive to maintaining the order of trademark registration.
In addition to the routine practice of filing non-use cancellation against the cited trademark based on the non-use for three consecutive years, the author emphasizes in the review of refusal process that the owner of cited trademark has been logged off, and thus the cited mark should not bar the registration of the trademark, such claim get different results.
The National Intellectual Property Administration
In some cases, the National Intellectual Property Administration believes that although the owner of the cited trademark has been logged off, it does not mean that the cited trademark is automatically invalid.
Precedent
In the decision of the National Intellectual Property Administration in the review of the rejection of the trademark [2023] No. 0000248339, it was decided that the logging off of the owner of the cited trademark does not mean that the cited trademark is automatically invalid.
However, in some cases, the claim has also been supported by the National Intellectual Property Administration.
Precedent 1
In the decision of the National Intellectual Property Administration in the review of the rejection of the trademark [2022] No. 0000374720：Given that the owner of the cited mark has already been logged off and no action has been taken against the cited trademark, it is reasonable for the Office to presume that the cited trademark is currently not in actual use. Therefore, the registration and use of the applied trademark should not cause confusion among consumers, and can be preliminarily approved.
Precedent 2
The National Intellectual Property Administration made the decision in the review of refusal decision No.[2023] No. 0000183847, that considering the cited trademark owner has been logged off, and its legal entity status has lost. There is no evidence to prove that the cited trademark owner dealt with the trademark rights before logging off or allowed others to use them, and there is no evidence to prove that the cited trademark is still in use. Therefore, the cited trademark currently has no owner. Therefore, the coexistence of the applied trademark and the cited trademark will not cause confusion or misunderstanding among the relevant public, and the two trademarks do not constitute similar trademarks.
From the above decisions, it can be seen that in the case of emphasizing that the owner of the cited trademark has been logged off without taking action to revoke the cited mark in the review of rejection process, the applied trademark were approved by the National Intellectual Property Administration.
The Court
Compared with the relatively conservative attitude of the National Intellectual Property Administration, the courts are more tolerant. In the administrative litigation judgments reviewed by the author, it is generally acknowledged that after the logging off of the cited trademark holder, the cited trademark cannot enter the circulation field and lose the function of distinguishing the origin of goods and services. Without evidence that the cited trademark has been acquired by other right holders, the cited trademark will not be confused with the applied trademark.
Precedent
The Beijing Intellectual Property Court ruled in the judgment of (2020) Jing 73 Xing Chu 2047: Although the cited trademark is still a valid registered trademark, its owner has been deregistered, and there is no evidence to show that the cited trademark has been transferred to another owner. For the cited trademark that is not used by the owner, it will not be circulated and used in the market, and will not cause confusion or misidentification between the disputed trademark and the cited trademark by the relevant public.
The difference in attitude between the court and the National Intellectual Property Administration lies in the fact that the court's main consideration is the basic function of the trademark to distinguish the source of goods or services. Without the cited trademark holder and no information on how the cited trademark is being handled, the cited trademark cannot circulate in the market and cannot play its role in identifying the source of goods or services. The National Intellectual Property Administration focuses more on maintaining the trademark registration system itself, and once a trademark is granted registration, as long as it remains valid, it should be protected.
The different perspectives of the National Intellectual Property Administration and the courts also determine their different attitudes on this issue.
Overall, if the subsequent trademark applicants find that the cited trademark holder has been deregistered and no action has been taken against the cited trademark, it is a good thing. Especially in cases where the cited trademark has not been registered for less than three years and cannot be revoked through the non-use cancellation action, by emphasizing the fact that the owner of the cited trademark has been deregistered, applicants can still strive for trademark rights and provide more space for registration in the future.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.