Article 50 of the Trademark Law stipulates that if a registered trademark is revoked, declared invalid or no longer renewed after its expiration, the Trademark Office shall not approve the application for registration of a trademark identical or similar to that trademark within one year from the date of revocation, invalidation or cancellation. How to understand and apply this provision still involves several issues. We have collated some information for your reference.
1. Legislative Purpose
When a registered trademark is revoked, declared invalid or no longer renewed at the expiration of its term and loses its trademark right, if the Trademark Office approves a new identical or similar trademark on the same or similar goods, without setting a certain period of isolation, such a situation may occur: the goods or services of the original registrant have not yet withdrawn from the market, the goods or services of the new trademark registrant have been put into the market, then two enterprises have appeared in the market and the consumers will confuse the origin of their goods or services. In order to avoid this situation, it is necessary to set up an "isolation period" to ensure that the goods using the prior trademark exit the market in this period, and no confusion will caused to the consumers. This the reason why Article 50 is made.
2. Exclusions
Article 50 shall not apply to registered trademarks that have been cancelled for non-use of three consecutive years without any justified reason. The reason is that the original registrant has not used the registered trademark for three consecutive years, and there are no goods or services of the registered trademark in the market, which has met the legislative purpose of Article 50 "one-year isolation period". Therefore, if the examiner finds an identical or similar registered trademark that has been cancelled for non-use of three consecutive years, it should not be cited even if the revocation time is less than one year.
3. Calculation of "one year"
According to China's trademark examination and review standards, when the examiner makes a decision on the application for trademark registration (here is the decision day for examination, not the application day for trademark), the date of cancellation (except for revocation due to three consecutive years of non-use), the date of invalidation or the date of revocation of the same or similar registered trademark is less than one year, this mark shall be cited according Article 50. If the same or similar registered mark has been cancelled or invalided or revoked more than one year as prescribed by Article 50, it shall not be cited. According to the current Trademark Law, the examiner should make a decision on the trademark application within nine months from the date of filing, but there are no more stringent regulations at present on the exact examination date.
“When a trademark applicant encounters a rejection of the application of Article 50 of the Trademark Law, he or she is recommended to file a review to make the "one-year period” expire through the review procedure, so that the application will have a chance to be registered.”
