Trademark Informationa

Applied Trademark: trademark“SOLON”No.22949415.

Designated Goods/services: Class 12: bicycles; bicycles frames; bicycle wheel rims; bicycle chains; bicycle tyres; pumps for bicycle tyres; vehicle whells; hubs for bicycle wheels; electric bicycles; hoods for vehicle engines.

Cited Trademark: trademark“索隆;SOLONG”No.4667019.

Designated Goods/services: Class 12: mini-sized motor vehicle; locomotives; motorized vehicles for land, air, water, or railway use; Interior decoration of vehicle; motorcycles; bicycles; cable cars; Luggage trucks; sleigh; bicycle tyres.

Case Introduction

Shenzhen Solon Sports Equipment Co.,Ltd. applied for the registration of the trademark "SOLON" No. 22949415 on February 27, 2017. After the examination by the CNIPA, the applied trademark was rejected because it was similar to the cited trademark. And then Shenzhen Solon Sports Equipment Co.,Ltd. filed a trademark rejection review, the CNIPA finally made [2018] No. 78779 trademark rejection review decision on the trademark "SOLON" No. 22949415 to reject the applied trademark. Shenzhen Solon Sports Equipment Co.,Ltd. refused to accept the decision, and filed an administrative lawsuit to Beijing Intellectual Property Court as the plaintiff within the legal time limit. Our firm Beijing Gaowo participated in the lawsuit as the agent of Solon Sports Equipment Co.,Ltd., the owner of the applied trademark. In the lawsuit, the exclusive term of the cited trademark has expired, and it has not been effectively renewed within the six-month extension period. Our agent elaborated from the fact that the cited trademark has not been renewed and is invalid. The court of first instance finally supported the plaintiff's claim, determined that the cited trademark no longer constitutes an obstacle to the right to apply for the trademark, and thus made a judgment to revoke the sued decision.

Case Analysis

Article 39 and Article 40 of the Trademark Law stipulate that the period of validity of a registered trademark shall be ten years, counted from the date of approval of the registration. Where the registrant intends to continue to use the registered trademark beyond the expiration of the period of validity, an application for renewal of the registration shall be made within twelve months before the said expiration. Where no application therefore has been filed within the said period, a grace period of six months may be allowed. If no application has been filed at the expiration the grace period, the registered trademark shall be canceled. The period of validity of each renewal of registration shall be ten years.

In this case, the expiry date of the cited trademark is March 6th, 2018. The registrant of the cited trademark has not applied for renewal of the trademark within 12 months prior to the expiration of the exclusive use as required, nor has it applied for renewal within the extended period after the exclusive use has expired. In this regard, the defendant was recognized in court, the court confirmed through examination. Therefore, by the end of this case, the cited trademark has lost the exclusive right to use the trademark because it has not been renewed on schedule, which no longer constitutes a right obstacle to the preliminary examination and approval of the trademark. Because the facts on which the Trademark Review and Adjudication Board (now renamed the CNIPA) made the sued decision have changed and have a direct impact on whether the disputed trademark can be preliminarily approved, the sued decision should be revoked.

Thus, the status of the cited trademark plays a key role in the success or failure of the trademark administrative litigation cases which are rejected because of trademark similarity. In the litigation, we must make a comprehensive analysis and inquiry of the cited trademark, including whether the cited trademark is in the administrative procedures of withdrawal, invalidation and objection, whether the owner of the cited trademark remains or is cancelled, and whether the term of the exclusive right of the cited trademark has expired, so as to fully seize the favorable opportunity to achieve the success of the case!