The applicant filed cancellation request based on the ground of non-use in a consecutive period of three years against the marks cited in the Decision of Refusal on the request of designating their international registration to China. Once the cited mark was cancelled, the applicant could successfully designate their international registration to China.

A Dutch beer and beverage company owns international registration JOPEN (see graph 1）. The applicant requested to designate this international registration to China in 2015.  Such a request was refused by the Chinese Trademark Office in 2016 because mark JOPEN is similar to a prior national registration JOSEN and the goods/services designated by the two marks are also similar.

                                            graph 1

The applicant requested review immediately with the following arguments:

1) The applicant’s trademark JOPEN and the cited mark are not similar marks in terms of the category of goods;

2) The applicant’s trademark JOPEN is the same as the applicant’s trade name which help to enhance the distinctiveness of the mark;

3) Through publicity and use, close connection between the applicant’s trademark JOPEN and the designated goods and between goods and the provider of such goods has been establish, so that the distinctiveness of the mark is enhanced;

4) The applicant has filed cancellation request due to not being used in three consecutive years against the cited mark. Once the cancellation request is approved, the cited mark will no longer hinder extension request of the protection afforded to mark JOPEN to China. The Trademark Review and Adjudication Board holds during the review of refusal, the cited mark JOSEN has been cancelled due to not being used in three consecutive years, and thereby cannot hinder the registration application of the subject mark anymore. According to the Trademark Law of China, the Board decides that the request of extending the protection afforded to the applicant’s mark JOPEN on the designated commodities reviewed shall be approved.

AFD China handled the case as the attorney for the Dutch beer and beverage company.

Remarks:

The key point in the case is that the applicant has filed cancellation request on the grounds of non-use in three consecutive years against the mark cited in the Decision of Refusal on the request of designating China for their international registration. Once the cited mark was cancelled, the applicant could designate their international registration to China successfully. In the review on refusal, the key to decide whether the Decision of Refusal can be revoked after review is how similar the cited mark and the reviewed mark are. If the cited mark is quite similar to the reviewed mark, the Decision of Refusal is very much likely to be upheld after reviewing. If the similarity between these two marks is low, it is very much likely that the Decision of Refusal will be revoked after reviewing.  If one or more cited marks have been registered for more than 3 years, filing cancellation request may increase the possibility for or even directly make the applicant win the review. When your registration application is hindered by a cited mark, together with requesting review, we suggest filing cancellation request against the cited mark if the cited mark has been registered for 3 years or more.