Fishing for infringements in PRC’s pool of dormant trademarks

Atrademark registrant has the exclusive right to use his registered trademark, and even if he has not actually used his registered trademark, his trademark rights should be accorded legal protection. However, the subject of protection under the PRC’s Trademark Law is not the mark itself, but the distinguishing function of the trademark and the commercial reputation established, so as to avoid confusion among consumers. The Trademark Law and the PRC laws and judicial practice have imposed certain limitations on the protection of registered trademarks that have not actually been used.

Application for cancellation

In reality, there are many registered trademarks that have not been used. It is because the Trademark Law does not require that a statement of intent to use the trademark be made at the time of registration, nor does it set actual use of a trademark as a condition of registration. It is a waste of public resources and may also impede the normal operations of others.

A trademark rights holder may use the trademark rights himself or license the rights to another. If a trademark registrant fails to use a registered trademark for a period of three years after successful registration, pursuant to Article 44 of the Trademark Law anyone may apply to the Trademark Office for the cancellation of that trademark. If the trademark registrant is unable to substantiate that he used his trademark during those three years, it could be cancelled.

Wang Yadong is the executive partner and Li Min is a partner at Run Ming Law Office.