The legal framework surrounding trademark invalidation in China, particularly the restrictive five-year limitation period, has long posed challenges for brand owners. However, we have achieved a breakthrough at the CNIPA level which signifies a welcoming shift in the CNIPA’s attitude on such timeframe. It is hoped that this development will empower brand owners in their fights to reclaim their marks from squatters beyond the five-year limitation period.
The China's Trademark Invalidation Legal framework
The grounds and timeframe for filing invalidation are stipulated under the following articles of the Chinese Trademark Law:-
- Article 44: “The China National Intellectual Property Administration (CNIPA) shall invalidate the registered trademark if it violates the provisions of Articles 4, 10, 11, 12 or Paragraph 4 of Article 19 of the Law, or it was acquired by fraud or any other improper means. Any unit or individuals may request the CNIPA for a ruling to invalidate such registered trademark...”
- Article 45: “Where a registered trademark stands in violation of the provisions of Paragraphs 2 and 3 of Article 13, Article 15, Paragraph 1 of Article 16, Article 30, Article 31 and Article 32 hereof, the prior right owner of interested party may, within five years upon the registration date of such trademark, apply to the CNIPA for invalidation the same. In the event of malicious registration, owners of well-known trademark may exempt from the aforesaid five-year duration.”
While the grounds for filing invalidation within 5 years from registration of the disputed mark are clearly outline in the above articles, when it comes to the requirements for filing invalidation after five years from registration, the wordings of the law are not entirely clear. It is generally believed that the disputed registration must be registered in bad faith and that the applicant filing the invalidation must rely on a well-known trademark under its name to file the invitation beyond the five-year time limit.
Given that the bar for the CNIPA to recognize the well-known status of a mark is set very high, successfully invalidating a trademark registered for more than five years has always been highly difficult. It is generally accepted that there is a five-year limitation period for invalidation in China even when the disputed mark was filed in bad faith.
Such five-year limitation period is easily exploited by squatters and infringers, and legitimate brand owners often find themselves in a situation where they have to pay exorbitant amounts to buy back their own trademark, especially when the squatters/infringers have been using trademark and would be able to defend any non-use cancellation filed against the registration.
The Court's Attitude Shifts to Empower Brand Owners
To cope with such problems, in recent years, there has been a noticeable shift in the Chinese court's attitude towards the five-year limitation in trademark invalidation cases. The landmark BOBDOG (China) Children's Articles Co., Ltd. v. Quanzhou Babudou Children's Products Co., Ltd. et al. (Civil Judgment No. 696 ), which was listed as one of the 50 Model Intellectual Property Cases tried by Chinese Courts in 2021 as published by the Supreme People's Court, demonstrates such shift.
In the above case, despite the expiration of the 5-year limitation period, the Beijing Higher People's Court allowed the invalidation of the squatter’s mark. While the Court did not explicitly state that the requirement of well-known status under Article 45 shall no longer apply, it upheld the invalidation decision based on the grounds that the disputed mark was filed in bad faith and that the brand owner’s mark has acquired “a certain degree of reputation in China”, which is a much lower standard than the well-known status.
Despite such instances at the Court, the CNIPA has generally exhibited its reluctance in doing so, and invalidation beyond the five-year limitation period has still been challenging at the CNIPA level.
Triumph Against All Odds: Our Groundbreaking Victory at the CNIPA Level
We have however, in a recent case, successfully persuaded the CNIPA to invalidate the squatter’s mark that had been registered for over five years. This decision is a highly welcoming sign for brand owners.
Our client, an internationally renowned luxury fragrances and cosmetics company, faced a difficult situation where a local Chinese cosmetics company had registered a mark incorporating the Chinese name of our client’s famous perfume brand and was identical to our client’s product name under such brand. Not only does the squatter’s registration blocks the client’s application for such mark, given that the squatter has also been using the mark, the same would also easily mislead the public into believing that the squatter is authorized by or otherwise affiliated with the client, thereby causing huge damage to the client’s reputation in China. Invalidating the squatter’s registration was therefore of paramount importance to the client.
However, the challenges of the invalidation were that the squatter’s mark had been registered for more than 5 years when it came to the client’s attention. This situation is especially common for Chinese names, as foreign brands used to focus more on its original Latin name. Further, the client does not have prior registration for the Chinese name of its fragrance brand incorporated in the squatter’s mark. That said, we successfully persuaded the CNIPA to recognize that the client’s marks have been used for a certain scale on perfumes and related goods in China and that the squatter’s mark was filed in bad faith. Despite the expiry of the 5-year limitation period and that the client’s well-known status was not expressly recognized, the CNIPA invalidated the squatter’s mark.
Way Forward: Hope Unleashed for Brand Owners in Trademark Battles
© Vivien Chan & Co., Newsletter issue 15, December 2023
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Vivien Chan & Co. is a full-service law practice with offices in Hong Kong (1985) and Beijing (1993). We are consistently recognized as a premier law firm for and in Greater China. With over 35 years of doing business in Greater China, our Hong Kong and China teams have an in-depth understanding and knowledge of the legal culture and market dynamics.
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