Many companies accidentally fall into some misunderstandings when using their trademarks, causing the cancellation / invalidated of trademark exclusive rights. BKIP will talk with you about these common reasons that lead to the cancellation / invalidation of the exclusive right to use trademarks to prevent “falling into the pit.” 5 reasons leading to the cancellation / invalidation of the exclusive right to use a trademark.
Reason 1: Not being used for three consecutive years
The “Trademark Law” stipulates: “If a registered trademark has not been used for three consecutive years without proper reasons, any party or individual may file application to the Trademark Office for the cancellation of the registered trademark.”
With the increase in trademark senses, the number of trademark registrations in our country has maintained a relatively high growth rate in recent years, and the resources for registered trademarks have become increasingly scarce. If the trademark has not been used for a whole three years, any party or individual has the right to file application to the Trademark Office for cancellation of the trademark.
Reason 2: Malicious registration of trademarks
Article 32 of the “Trademark Law” stipulates: “Applying for trademark registration neither shall damage the existing prior rights of others, nor shall it by improper means preemptively register trademarks that have already been used by others and have certain influence already.”
For new trademark registration application that violate this provision, the prior right holder or interested party may file an objection to the Trademark Office. For successfully registered trademarks, the prior right holder or interested person may request the Trademark Review and Adjudication Board to declare the registered trademark invalid within five years from the date of registration. In the case of malicious squatting, the well-known trademark owner is not subject to the five-year time limit and can request the Trademark Review and Adjudication Board to declare the registered trademark invalid anytime.
Reason 3: Irregular use, change the registered trademark at will
Article 49 of the “Trademark Law” stipulates: “if a trademark registrant alters the registered trademark, registrant’s name, address or other registration matters by himself while using a registered trademark, the local Administrative Department for Industry and Commerce shall command it to restore within a limited time frame; If it fails to do so, the Trademark Office shall withdraw its registered trademark.”
Changing the font and pattern of the trademark at will, this kind of common-sense mistake, is the most common mistake made by small and medium-sized enterprises. Many companies subjectively believe that the trademark is theirs, and they can use whatever way they want. From the perspective of the “Trademark Law”, this opinion is wrong. In the case of misuse of trademarks, the minor ones will be punished by the Administrative Law Enforcement Department subject to administrative penalties, leading to the loss of the exclusive right to use the trademark; the more serious ones, once the above-mentioned acts constitute infringement, they will not only bear administrative responsibility but also civil liability.
In addition, changing fonts and patterns at will is also very detrimental to brand building and broadcasting. In other words, a company that uses trademarks so casually may not have the concept of “brand” in mind.
Reason 4: Trademark expired without renewal
The “Trademark Law” stipulates: “If a registered trademark needs to be used continuously after the expiration date, the trademark registrant shall go through the renewal procedures in accordance with the regulations within twelve months before the expiration date; if the trademark renewal fails to be processed during this period, six months grace period may be given. If the renewal procedure is still not completed after that, the registered trademark shall be cancelled.”
Calculated from the date of approval of registration, the trademark applicant will have the exclusive right to use the registered trademark for ten years. After the ten-year period, if the trademark holder fails to go through the renewal procedures in time, the registered trademark will be cancelled.
Reason 5: Trademarks become generic names
The “Trademark Law” stipulates: “if a registered trademark becomes the general name of the goods approved to use, any entity or individual may file application to the Trademark Office to invalidate the registered trademark.”
The important function of trademarks is to distinguish the source of the goods or services. Therefore, the “Trademark Law” stipulates that the registered trademark application must be distinctive. If a registered trademark is frequently used to describe designated goods, causing it to gradually become a generic name, the distinctiveness of the registered trademark will be greatly reduced, so it will face the risk of invalidation.