Chinese IP Law Updates
October 10, 2018

Should Invalidation Action Cease for Non-use Cancelled TM?

Co-authors: Betty Chen, Shirley Lin

Source Material:
Judgement No. (2015)JZXCZ02902

Parties Concerned:

Plaintiff: Wm. Wrigley Jr. Company (“Wrigley Co.”)
Defendant: Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (“TRAB”)
Third Party: Garton International Limited (“GartonLtd.”)

Case Overview:

Wrigley Co. applied for invalidation of Garton Ltd.’s registered trademark No. 8416566 “MELEPINA5 and device” (the “Disputed Trademark”) before the TRAB who decided to maintain the trademark. Not satisfied with the result, Wrigley Co. took the TRAB to the Beijing Intellectual Property Court in May 2015. In December of the same year, the Disputed Trademark was canceled for not having been in use for a three years period. In February 2018, the invalidation of the trademark dispute was declared in the first instance of the administrative confirmation case between Wrigley Co. and the TRAB. In court, the Plaintiff pleaded for termination of the court proceedings since the Disputed Trademark’s cancellation has been effective and published on the Trademark Gazette issued in December 2015, citing no necessity to continue the trial.

Court Opinions:

The court held that trademark cancellation and invalidation are different in their nature and implications. While cancellation hinges on whether a trademark has undergone true and valid commercial use in a certain period, invalidation is centered around its compliance with regulations on trademark application and registration. As for their legal consequences, the cancellation means that the related exclusive trademark rights are terminated upon the Trademark Office’s decision as such, but after invalidation, the rights are deemed non-existent in the first place. In summary, a trademark that suffers cancellation is still able to maintain a validity period from the date of its registration to when canceled, as opposed to invalidation. The court thus regarded it was necessary to carry on with the trial, and eventually maintained the TRAB’s decision not to invalidate the Disputed Trademark.

HFL Comments:

Even if both proceedings aim to erase rights to a registered trademark, cancellation and invalidation still differ in some ways. A trademark is canceled by the competent administration for incidents that have undermined the grounds for its protection after its registration, pursuant to Article 49 of the Trademark Law. Since no wrong has been done during the acquisition of the trademark rights but rather it was found the improper use (or no substantial use at all) of the trademark, later on, the deprivation of the rights is thus relative and only concerned with the period after registration. On the other hand, invalidation occurs when laws and regulations on a trademark’s application and registration are violated, threatening the country’s order of law and the public’s interests.

The Trademark Office or the TRAB has the power to announce a wrongfully registered trademark to be invalidated citing absolutely or relatively banged circumstances according to Articles 44 and 45 of the Trademark Law.

This results in prima facie and absolute void of trademark rights effective ab initio – as such, the trademark is deemed to have never been applied or registered and there existed no rights attached thereto upon the authorities’ decision.

In practice, the Beijing Intellectual Property Court should bring an end to a court action concerning disputes over a trademark’s cancellation after it has been invalidated. But in reverse order, court proceedings should continue their course to decide whether a canceled trademark should be subjected to invalidation or not.

If you would like some more personalized review of the news from us, please kindly let us know by writing Thank you.