BKIP Limited


What if the Trademark Registration is Forestalled? Aug 2018
In the context of enterprise development where intellectual property rights as an essential component, the number of trademark registrations has been skyrocketing. The competition in trademark market is getting keener. The business field is literally a battlefield. While trademarks are the necessary tools for enterprises to protect their products, they are also the most vulnerable weakness of enterprises. The phenomenon of forestalling trademark is emerging continuously. While we sigh at the condition where trademark is squatted, we should handle the condition of trademark squatting more skillfully, and strive for trademark registration rights.
How to deal with trademark squatting? We raise the following two measures as suggestions: 1. An objection may be filed against a trademark which has not been approved for registration After the trademark application passes the formal review, it would enter a three-month trademark announcement period. This means at that moment the trademark has not been approved for registration. The company can oppose the concerned trademark registration during that period. Some trademark owners found their trademarks have been forestalled for registration but are uncertain about the success rate of filing a trademark objection. Regarding this, if the trademark owner confirms the trademarks being squatted is the one he/she uses previously, he/she could consult a professional trademark agency and prepare the relevant materials as evidence. Under such condition, the success rate of making an objection is very high. The legal ground for filing an objection is stipulated in Article 32 of the Trademark Law, which states, "The application for trademark registration shall not prejudice the existing prior rights of others, nor may it unfairly forestall the registration of trademarks that have been used by others and have certain influences." 2. An application may be filed for invalidating the registered trademarks If you missed the trademark announcement period which you can file an objection that no opposition has been made and the concerned trademark has been approved for registration. The trademark owner might request the Trademark Office Trademark Review and Adjudication Board to declare the registered trademark is invalid, based on Article 45 of the Trademark Law. There is a five-year time limit on trademark invalidation applications, which means a trademark which is registered for more than 5 years, cannot be declared invalid on the grounds of being squatted. It shall be noticed that well-known trademarks are not subject to this time restraint. Therefore, a trademark owner should take action as soon as possible if finding his trademark registration is forestalled. Trademark implementation hinges on the principle of early registration. One day late for registration may result in a completely different outcome. The squatting of trademark affects the brand's effectiveness, so trademarks should be registered as soon as possible to prevent trademark squatting or other malicious conditions concerning the trademark registration. Enterprise should keep record of evidence of using the trademark such as advertising leaflets, contracts, invoices and etc. In a nutshell, trademark registration is the critical part so it should be done as early as possible, for avoiding miscellaneous future trademark disputes!