This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com
The Chinese Trademark Office has issued a notice on the renewal of trademarks that are the subject of opposition proceedings at the Chinese Trademark Office, review at the Trademark Review and Adjudication Board (TRAB) or appeal before the courts.
In China, trademarks are registered for an initial term of 10 years from the expiry of the opposition period (three months). If the trademark application is subject to opposition, it usually takes a few years for a decision to be issued by the Trademark Office - and even longer if the decision is subject to review by the TRAB and is further appealed to the court. Therefore, by the time the TRAB or the court issues a decision allowing the registration of the trademark at issue, the initial period of registration may have expired.
The notice of the Trademark Office, which was issued on January 20 2009, states as follows:
- Trademarks whose initial period of registration is due to expire: the trademark owner may apply for renewal within six months of the expiry of the registration. There is a grace period of six months following the expiry of the registration.
- Trademarks whose initial period of registration has already expired: the trademark owner may apply for renewal within one year of the publication date of the notice (ie, by January 19 2010).
Upon receiving the application for renewal, the Trademark Office will decide whether to approve the application depending on whether the office, the TRAB or the court has upheld or dismissed the opposition. If the trademark is ultimately refused registration, the Trademark Office will reject the application for renewal and the renewal fee may be refunded.
Where a trademark has already been approved for registration following opposition, review or court proceedings, but the initial period of registration has expired at the effective date of decision, the trademark owner may apply for renewal within one year of the publication date of the Trademark Office notice.
Failure to apply for renewal will result in the cancellation of the registration, even where registration of the mark was eventually allowed.
Trademark owners are thus advised to check when their registrations are due to expire and apply for renewal within the appropriate deadline in order to avoid the cancellation of their marks after years of proceedings.