The system of invalidation of registered trademark rights refers to the fact that there are absolute or relative reasons for non-registration when the trademark is applied for registration.  After the trademark registration administrative department discovers it on its own initiative or is applied by others, the trademark registration administrative department declares the registered trademark invalid and makes the trademark invalid. The return of the right to a legal system that did not exist from the beginning is a way to eliminate trademark rights.

According to the provisions of paragraphs 2 and 3 of Article 13 of the Chinese Trademark Law, the trademark applied for registration for the same or similar goods is a well-known trademark that is copied, imitated or translated by others that has not been registered in China, which is likely to cause confusion, prohibited to use.  If the trademark applied for registration of a different or dissimilar product is a well-known trademark registered in China that is copied, imitated, or translated by others, misleading the public, so that the interests of the registrant of the well-known trademark may be harmed, registration shall not be granted and the use shall be prohibited".  This provision is a relative reason for the prohibition of registration. First, it prohibits the registration of other well-known trademarks that have not been registered in China on the same or similar goods, and second, prohibits the registration of other well-known trademarks that have been registered in China in all categories.

According to Article 45 of the Chinese Trademark Law, within 5 years from the date of trademark registration, the prior right holder or interested party may file a request for invalidation of the disputed registered trademark.  Under normal circumstances, the owner of a well-known trademark must file within 5 years from the date of registration of the trademark, but if it can be proved that the trademark registration is malicious registration, it is not subject to the 5-year period.

In the trademark invalidation procedure, the prerequisite for applying the provisions of Articles 13 and 45 of the Chinese Trademark Law is to determine whether the cited trademark constitutes a well-known trademark.  Regarding the identification of well-known trademarks, according to Article 14 of the Chinese Trademark Law, the relevant public’s awareness of the trademark, the duration of use of the trademark, the duration and extent of any publicity of the trademark, and the geographic scope of the trademark, protected records, other factors of trademark well-known should be considered as well-known trademarks.  In the "TOEFL" trademark invalidation request dispute case, the applicant's "TOEFL" trademark and "TOEFL" trademark of the American Educational Testing Service Center began to be used in China in 1981 and have been continuously promoted.  The test outlets are all over in most provinces, cities and regions of the country, the number of test sites and the number of applicants continues to increase, and the influence and popularity continue to increase. Based on this, it can be determined that the trademark "TOEFL" have been registered before the disputed trademark "TOEFL" and it is well known to the relevant public and constitutes a well-known trademark.

Regarding the determination of "copying, imitating, or translating another person’s well-known trademark", copy refers to the exact same as another person’s well-known trademark; imitation refers to the complete plagiarism of another person’s well-known trademark or copying the distinctive parts or distinctive features of another person’s well-known trademark; translation refers to making another person famous trademark expressed in different languages, and the language has established a corresponding relationship with the well-known trademarks of others, and is widely known or used by the relevant public.  Regarding the "TOEFL" trademark invalidation request dispute case, the disputed trademark is a pure English trademark "TOEFL", which is identical to the well-known "TOEFL" trademark claimed by the applicant and constitutes a copy.

Regarding the determination of "malicious registration", in accordance with Article 25 of the "Regulations of the Supreme People's Court on Several Issues Concerning the Trial of Administrative Cases for the Trial of Trademark Authorization and Confirmation", the people's court judges whether the applicant for a trademark in dispute has "maliciously registered" another well-known trademark.  It is necessary to comprehensively consider the popularity of the cited trademark, the reasons for the disputed trademark applicant to apply for the disputed trademark, and the specific circumstances of using the disputed trademark to determine its subjective intention.  Where the cited trademark is well-known and the applicant for the disputed trademark has no legitimate reason, the people's court may presume that its registration constitutes a "bad faith registration" as referred to in Article 45, paragraph 1, of the Chinese Trademark Law.

The provisions of Articles 13 and 45 of the Chinese Trademark Law reflect the increased protection of well-known trademarks, and reflect the strict administrative and judicial regulations on deliberately attaching to the reputation and goodwill of others’ trademarks.  The invalidation request system is conducive to safeguarding the legitimate rights and interests of the parties.

                                              From PEOPLE.CN

August 11th, 2020