A trademark in China may be cancelled without awareness of the trademark owner?

First, what is cancellation?  A cancellation or a revoke means to invalidate someone’s trademark for lack of use for consecutive 3 years in China.  Anyone may initiate such action against such trademark, and the trademark owner has the burden to prove that he is in good use of the trademark. 

A client from Nigeria communicated with me about cancellation of his trademark in China.  He was using the trademark to license an OEM manufacturer to produce toothbrushes in China.  The thing is, he was totally unaware that his mark is under cancellation in China.

Why? It is the fault of CTMO? At the time of application, CTMO requries a foreigner to work with a local agent.  There would be a notice to answer a cancellation request sending to the local agent, but if the agent fails to notice the applicant or the applicant cannot contact the applicant, CTMO will public in its gazette a notice, which will generally be ignored by the applicant.  Since the owner has the burden to prove his use of the mark, failure to anwer will be hold as a failure to prove - that’s why cancellation works frequetly.

Here are my suggestions:

1. Keep evidence of use in China;

2. Register your trademark every two-three years after granting in China to avoid cancellation;

3. Ask your agent to watch your trademark carefully and make sure you can be contacted;

4. If your mark cannot be registered in China due to any barrier, consider cancellation.

Can “Green Prickleyash” (青花椒) be registered as a trademark on catering service in China?

If you do not know green prickleyash, I would say it is like garlic in India food, or butter in a bread.  It is one of the main seasonings in Sichuan cuisine. 

Green Prickleyash

Recently a company based in Shanghai city initiated a series of litigations against restaurant owners using the word “Green Prickleyash”.  The actions have aroused intense discussion in China because Green Prickleyash may not be recognized as a trademark to the public to the first impression, namely when Green Prickleyash is listed on the signboard, most people would recognize Green Prickleyash as an element of the food, but not a brand.

But CTMO did grant the trademark, so there is no problem for the trademark owner to sue.  The local court in Chengdu city judged infringement against a tiny restaurant owner in the first instance, and a 30,000 RMB compensation has been granted to the trademark owner – the reason is clear, the trademark valid, the word Green Prickleyash is on the board of the restaurant. 

The restaurant owner appealed.  During the period of second instance, the public discussion of this case is so fierce that the local government has to make an announcement that it also feels the restaurant owner may not be infringing because he is not intended to use Green Prickleyash as a trademark, namely it is not a “trademark use”.  One the other hand, some experts still guard the idea that granting of the trademark is not in breach of the trademark law.

The intermediate court of Chengdu does not have to judge whether the trademark is valid -  Chinese court does not have the authority to judge whether a trademark is valid.  But in its final judgment, it versed the judgment to be not infringing.  There are two main reasons:  a. Green Prickleyash is not obvious enough to be recognized by the public as a trademark; b. the restaurant owner does not intend to use Green Prickleyash as a trademark.

One real case I saw is Eucalyptus be registered as a honey brand, but actually it is a place honey is made.  CTMO seems to be quite loose on such trademark, but the real reason would be, I assume, the reviewers may not know the meaning of all these words.

So if you are facing this kind of problem, try to invalidate the trademark for lack of distinctiveness, as the restaurant owners do against Green Prickleyash.  I’ve represented a client against the trademark “Half” in pipeline industry – half is a common technic of combination in the pipeline, but the reviewer may not be aware of the this fact – we were successful in this case.

Contact Mr. Ma Jun for Chinese trademark consulting and search :

majun@100ybf.com

How to search a Chinese trademark?

Well, I really do not think searching yourself is a good idea.  As far as I know, a lot of people in China cannot use the CTMO system well even if Chinese is their mother language, not to say a foreigner.

I am providing free consulting and searching for clients, so you may well refer to me. 

Still, I know a lot of people really want to make some rough search of the trademark to understand a rough idea.  I believe you should be able to do a rough search upon my guidance:

1.       Do not use any system other than CTMO official one

If you search on Google, you will find some search system with the .com domain name, they are generally commercial pages, if it is a commercial page, you may get result with commercial purpose.  Here is the official site of CTMO:  https://sbj.cnipa.gov.cn

2.       Steps to use CTMO system to search

 

Click this one (Search Trademark) to search your trademark on the homepage of CTMO. 

     Click this one (I accept) to enter the next page.

 

Click this one (Similar mark search) to enter the search page.

And fill in the blankets with the translations below:

 

3.       How to read the results of search

Take my trademark for example, click the blue number to enter the next page:

If there is a date at the place of red arrow, and the end date is later than the current date, the mark is valid.

If you see this sign on the information page, the trademark is not valid.