A successful trademark application is only the first step of the trademark business, whether the trademark is sustainable depends on the management of the trademark details. Today, we are going to discuss the significance of amendments of trademarks.
Section 1 of Article 49 of the Trademark Law of the PRC provides that: where a trademark registrant alters a registered trademark without approval, the name, address, or other matters concerning the registrant without approval, the Trademark Office shall order it to rectify the situation by a specified time; If they still fail to rectify during the specified time period, the Trademark Office shall cancel the registered trademark. Apart from that, the failure of rectifying the trademark registration may bring the following consequences:
1. Effect on the transfer and licensing of the trademark:
Article 30 of Regulations for the Implementation of the Trademark Law of PRC provides that: Where the name or address of a trademark registrant or any other registration particulars is modified, an Application for Modification shall be filed with the Trademark Office. Where the name of a trademark registrant is modified, the modification certification document issued by the relevant registration authority shall be also submitted. The Trademark Office shall, upon approval, issue a corresponding certification to the trademark registrant and publish the modification; where the application is not approved, the Trademark Office shall notify the applicant for modification in writing and give the reasons.
When corporates and individuals make trademark transfer or licensing, Trademark Office will verify whether the address and name of the correspondence and business registration of the trademark registration are consistent. If there is any inconsistency in the name and address of the corporates, the Office will deny the application. The applicant has to make an application for amendment, in order to proceed to the procedure of trademark transfer and licensing.
2. Trademark may be cancelled by any organization or individual
Section 2 of Article 49 of Trademark Law provides that: Where a registered trademark is becoming a generic name in a category of approved goods, and the mark has not been used for a period longer than three years without any justifiable reasons, any organization or individual may request that the Trademark Office make a decision to cancel such registered trademark.
Literally speaking, if the trademark has not been used for three consecutive years, any individual or organization has the right to apply for cancellation of that registered trademark. If the Trademark Office receives such an application for cancellation, it will send a notification letter to the address of the registrant, as provided by him. If the corporate has moved and does not receive the notification letter, and the registrant cannot provide the evidence of the trademark being used on or before the deadline, the Office will cancel the trademark registration.
3. Effect on launching new shops in malls or online platforms
Normally, launching shops in malls or online platforms requires verification of the names and addresses of the trademark and the business registration. If there is any inconsistency, the company will be prohibited to launch the shops of the company. For instance, a fashion company decided to launch a shop in a particular mall. The company did not make an amendment on the trademark address. During verification, the inconsistency was spotted. It caused eventually the series of plans and promotions going in vain and a plunge in its profits.
4. Effect on the renewal of the trademark
The effective period of a trademark is 10 years. Registrants must apply for renewal if they would like to continue using the trademark after the expiry.
Verification of trademark information is required when applying for a renewal. In the case that the name and address of the trademark have to be amended, the nearer the expiry date is, the more complicated the procedure is. What is worse, the renewal procedure may not be completed before the expiry. If the registrant would like to re-register, if another individual or corporate has registered it during the meantime, and the brand he created may have to be “given” to others.
In reality, many trademark registrants are not aware of this issue. They may think that the successful registration of trademark is the end of the story, and omit the step of address amendment. However, the negligence of the trademark owner may lead to a loss of a million-worth brand which was created by himself. Therefore, I would like to remind all owners of trademark to protect your own trademark rights, and file timely amendment application when there is a change in your business registration information.