What to do when a trademark is preemptively registered
(1) File an objection to the Trademark Review and Adjudication Board
After discovering that one's unregistered trademark has been registered, the owner can file an objection to the Trademark Review and Adjudication Board within 3 months from the date of announcement. . For a trademark that has been officially authorized, the owner may, within five years from the date of trademark registration, request the Trademark Review and Adjudication Board to declare the trademark invalid because it violates Article 33 of the Trademark Law. However, the following conditions must be met:
1. Prove that the unregistered trademark has certain influence
In China Trademarks that are actually used within the country and are known to a certain range of relevant public should be deemed to be trademarks that have been used and have certain influence. If there is evidence to prove that the trademark has a certain continuous use time, area, sales volume or advertising, etc., it can be determined to have a certain influence. That is, the party concerned should provide evidence to prove that the use of the unregistered trademark has reached the level of popularity among a certain range of relevant public.
The court has certain flexibility when determining "a certain range of relevant public" and "notability", and will comprehensively consider various factors and determine whether a single advertisement , one commercial activity and occasional short-term use are not enough to reach the level of "having a certain impact".
2. Prove that the unregistered trademark has been actually used
In commercial activities, use the trademark logo to indicate The source of the goods and the way in which the relevant public can distinguish the different market entities that provide the goods are all ways of using trademarks. In addition to general use, the use of trademark logos on two-dimensional or three-dimensional media such as audio and video, electronic media, and the Internet to make the relevant public aware of the trademark, the goods marked by the trademark, and the product providers are all uses of trademarks.
There is no actual use of the registered trademark, only transfer or licensing, or only the publication of trademark registration information or a statement of exclusive rights to the registered trademark, etc. , the court generally does not consider it to be trademark use. Therefore, a singleThe act of exclusive transfer, licensing or mere declaration of trademark ownership cannot be regarded as the use of a trademark. However, an enterprise can use its transfer or license of an unregistered trademark as auxiliary evidence, combined with the use of the trademark as mentioned in the previous paragraph, to prove that the unregistered trademark owner "has used" the trademark.
3. Prove that the other party has registered by unfair means
If the person who registered has known or should have known If an unregistered trademark with certain influence has been used by others before but still registers the trademark, this behavior may be deemed as using unfair means. Therefore, before initiating a trademark objection or cancellation procedure against a squatter, the party concerned should actively collect evidence that can prove that the squatter is aware of the use of the unregistered trademark, so as to prove that the squatter has carried out preemptive registration by unfair means. Behavior.
It should be noted that if it can be proven that the registration is malicious, the time for raising objections is not limited to 5 years.
(2) Apply to cancel the trademark
According to the provisions of the Trademark Law, if there is no registration after three years, A used trademark can be revoked on the grounds that it has not been used for three years. If the trademark registrant fails to provide evidence of use within the specified time limit, it will be revoked.
Applying for cancellation of a trademark requires meeting certain conditions, that is, the domestic trademark has been registered for three years and the trademark has not been used within three years.
(3) Reaching a settlement with the squatter
Usually this situation applies to the exhaustion of all laws relief measures later.
Article 59 of the "Trademark Law" stipulates that before the trademark registrant applies for trademark registration, others have already used the same or similar goods before the trademark registrant. If a registered trademark is identical or similar to a trademark and has a certain influence, the owner of the exclusive right to the registered trademark has no right to prohibit the user from continuing to use the trademark within the original scope of use, but may require the user to attach an appropriate distinguishing mark.
The user can negotiate with the trademark registrant to obtain authorization or obtain the trademark rights through transfer. Otherwise, the user can only continue to use the trademark within the original scope, with restrictions. With the expansion of business scale. The above is the relevant knowledge about the above issues compiled by Hualu editor for you. This website provides you with professional lawyer consultation. If you have any questions, you are welcome to enter the Legal Savior Network for consultation.
