Whether there is still a isolation period for the obligee to apply for registration after the malicious rush to register a trademark is invalid -- on the application of Article 50 of the Trademark Law
1、 Case introduction
Company a maliciously preempts the use of company B and has certain influence on the trademark. Company B applies for invalidation of company a's preemptive trademark, and applies for registration of the trademark at the same time. Company B applied for reexamination due to the similar rejection of B and company a's rush to register trademarks. After the review, it was found that company a constituted the case of registering others' prior use by improper means and having certain influence on the trademark, and the registered trademark of company a was declared invalid. The judgment was upheld by the court's second instance decision. According to the effective judgment of the court, the review held that the trademark of company a was invalid, and preliminarily approved and registered the trademark of company B. Now company a considers that the trademark of company B is approved for registration within 1 year after it is invalid, which violates Article 50 of the trademark law.
2、 Article 50 of the trademark law establishes the "isolation period" for trademark registration
Article 50 of the trademark law stipulates that where a registered trademark is revoked, declared invalid or no longer renewed at the expiration of the period, the Trademark Office shall not approve the application for registration of the same or similar trademark within one year from the date of revocation, declaration of invalidity or cancellation. This article originates from Article 32 of the Trademark Law of 1993 and Article 46 of the Trademark Law of 2001, that is, if the registered trademark is revoked or is not renewed at the expiration of the period, the Trademark Office shall not approve the application for registration of the same or similar trademark within one year from the date of revocation or cancellation. That is to say, a one-year "isolation period" is set for the revoked or cancelled trademarks. The isolation period is set during the epidemic period to prevent the spread of virus. The isolation period is set after the cancellation or cancellation of registered trademarks to prevent confusion and misidentification.
The legislative purpose of the one-year "isolation period" is to eliminate the possibility of confusion and misidentification of the relevant public caused by the coexistence of the two in the market if the goods or services with the same or similar goods or services are approved on the same or similar trademark registration immediately.
3、 1 year "isolation period" exceptions
（1） The provisions of Article 50 shall not apply to the non use of the revoked registered trademark for three consecutive years
Based on the above legislative purpose, the author has no objection to the application of Article 50 of the trademark law not to approve the registration of a trademark with the same similar trademark if the registered trademark has been cancelled or revoked for less than one year due to non use for three years.
The provisions of Article 50 of the trademark law should not be applied to a registered trademark that has been revoked for three consecutive years without the necessity of setting a one-year isolation period. First of all, based on the fact that the registered trademark is not used for three years, the registrant has not used the registered trademark for three consecutive years, and there is no commodity or service using the registered trademark in the market, so there is no need for isolation. Secondly, Article 30 of the detailed rules for the implementation of the Trademark Law of 1993 has stipulated that the application for registration of the same or similar trademark on the same or similar goods is not subject to Article 32 of the trademark law, which is the same or similar to the trademark revoked in Article 29 (not used for three years). When the trademark law was revised in 2013, the article 46 of the trademark law in 2001 was simply replaced by the existing Article 50, which obviously overlooked the original exception.
（2） Article 50 shall not apply to a trademark which has been declared invalid due to hoarding or malicious rush to register
As for the registered trademark, especially the trademark that has been declared invalid for less than one year due to hoarding or malicious rush to register, the author thinks that it is against the legislative purpose to apply Article 50 of the trademark law not to approve the application of the same similar trademark registration of the previous obligee.
In practice, in order to maintain their own legitimate rights and interests, the prior obligee applies for trademark registration when he claims invalidation of the hoarded or maliciously registered trademark. According to the existing review standards, it will lead to a series of adverse consequences:
Firstly, a maliciously registered trademark should not have been approved for registration. After being declared invalid, its effect is also invalid from the beginning, and its prior use is also illegal. It is difficult to produce a certain effect against other people's trademark. Therefore, there is no market coexistence period in the theory of its trademark registration application with the prior obligee. According to the existing review standards, if a malicious registered trademark is given a one-year isolation period, not only the legal trademark registration application of the prior obligee is not authorized in time, but also the market sales behavior of goods or services that are hoarded or maliciously registered trademark infringement is encouraged, which is contrary to the current trend of severely cracking down on hoarding and maliciously registering, which is not in accordance with the law and reason, and may also lead to a large number of letters and complaints from the prior obligee. Second, because the prior obligee can't judge the time when his trademark registration application may be authorized, it will cause him to continuously file trademark registration application to safeguard his legal rights, which will increase the burden of the prior obligee. Third, according to the existing examination standards, it is likely to lead to the rejection of the prior application of the prior obligee, and the subsequent application of other subjects for approval of registration, which leads to a series of subsequent trademark ownership disputes. Fourth, if the existing review standards are implemented, a large number of review cases will face the consequences of losing in the subsequent administrative litigation; fifth, the judicial review usually does not consider the one-year isolation period, and the citation of invalid trademarks is rejected or the non registered trademarks are judged by our bureau. If the existing review standards are implemented, the court's effective judgment and ruling will not be implemented, which will damage the image of administration according to law.
It is suggested that: first, the relevant provisions of Article 50 of the trademark law should be amended in the subsequent amendment. It is necessary to establish a relevant system that the trademark which is determined to be a malicious rush to register by an effective ruling can be directly transferred to the real obligee's name. The second is to revise the examination and review standards applicable to Article 50 of the trademark law as soon as possible; the third is to review and review the trademark registration application involving Article 50 of the trademark law in the registration examination, objection and review in accordance with the principle of application first, no longer invoking the right to dismiss the trademark or not to register, and to cancel the quoted trademark in the subsequent registration announcement The registration announcement shall be made after the cancellation or invalidation of 1 year.
