ChinaTrademarkService.com

Global protection of brand

Mark : SUNING
Class : 1 - 45

Brief: In 2017, NEW&HIGH handled the global protection of brand SUNING which covers all 45 classes and designates nearly 90 countries. By cooperating with trademark professionals around the world, NEW&HIGH, in charge of the global brand management project, successfully managed all notarization/legalization work and filing procedures.

Our associates around the world collaborate to improve the client’s global protection plan. Such global team’s diverse dealings with government authorities and agencies allow us to keep up-to-date on legal information and provide effective solutions.To maintain the registered marks and keep track of further procedures that may be required by certain IP offices, we offer regular reports and meetings to keep our client updated on each progress.

Cancellation may play a key
role in gaining trademark
rights in China

Mark:  

Class : 38, 41, 42

Brief: In June 2016, the said trademark applications were refused by Chinese Trade Mark Office (CTMO) on the grounds of the existence of similar prior marks. With a comprehensive search done for the cited marks, we found that they were ghost marks never been in use in commerce.

According to Article 49 of Chinese Trademark Law, a mark that has not been used for a period greater than 3 years without any justifiable reasons is subject to cancellation at the request of any organization or individual. We, therefore, promptly advised the client to abandon the said trademark applications and try to re-apply while canceling the earlier marks ( Unlike some trademark authorities, CTMO does not wait for the ruling of cancellation of earlier marks when deciding whether to accept a trademark in its review.) . After a year's waiting, we finally received the decision that all the earlier marks were canceled and the client's new trademark applications proceeded to registration later.

Strategy to overcome refusals

Mark :
Class : 12

Nanjing Automobile (Group) Corporation ( “NAC”in short) is a leading automobile-manufacturing enterprise in China. It filed an application of trademark designating“cycle cars; automobiles”. In 2016, it was refused for being similar to the earlier trademark by Foshan Yuxi Automobile Technology Co., Ltd.

Our investigation shows that the main business of Foshan company is selling cars rather than manufacturing. Moreover, the cited mark itself was in the proceeding of re-examination and the possibility of being refused is very large. The possibility for NAC to obtain the registration through re-examination is large, since the deadline to submit the supplementary materials for re-examination of the applied-for mark is close to the time that the board makes decision on the cited mark. According to our practice, the board would refuse the application of the cited mark and then re-examine the application of the applied-for mark. At that time, the cited-mark would not be the barrier for the applied-for mark.

Based on the above, NEW&HIGH filed the application for re-examination, and submitted the supplementary materials for the re-examination in November 2016, meanwhile the board refused the application of the cited mark several days later, which is exactly the same as we expect.The procedure for obtaining a trademark registration is never easy. We should keep optimistic and seek strategies by virtue of our rich practical experience.