Once the trademark is approved for registration, anyone can file an invalidation against the registered trademark according to the absolute and relative grounds. The trademark examiner will determine whether the registered trademark violates the relevant provisions of the Trademark Law. In this article, let’s talk about what are the absolute and relative grounds for trademark invalidation.
1. Concept
Absolute grounds refer to the visibility, distinctiveness and legality of a registered trademark, it can be invalidated. According to the relevant provisions in the Trademark Law Article 4, Article 10, Article 11, and Article 19, the specific prohibition circumstances can be summarized as follows.
- Bad-faith registration for the purpose of nonuse.
- Violation of the politics, ethnicity, culture, morality, or have other unhealthy influences.
- Having the fraudulence to mislead the public.
- Consisting of the generic information of the goods only or the shape determined by the nature of the goods.
- Trademark agencies apply for a trademark on goods/services other than agency services.
The absolute grounds are intended to protect the stability of the trademark registration system so that the registered trademark will not violate the politics, economy, culture, morals, and the stability of the trademark system and agency service system of the country, limit the scope of trademark rights to the scope of use of the applicant.
Relative grounds refer to with the prior rights or other legal interests which conflict with the trademark, the owner of prior rights may file an invalidation of the registered trademark according to Article 13(2) and (3), Article 15, Article 30, Article 31 and Article 32 of the Trademark Law. The prior rights or other legitimate interests include:
- Prior registered similar trademarks, well-known trademarks and well-known unregistered trademarks in the same class.
- An applicant who has any contractual, business or other relationship with another person to register the trademark of that person.
- Name right, portrait right, copyright, and unique name of well-known products, and other rights.
The relative grounds are aimed at those would damage the trademark rights, or other legitimate rights and interests acquired in advance by others, although not disrupt the national orders, and in order to maintain the stability of the order and protect the interests of the prior rights owners, the Trademark Law provides the prior rights owners the basis to invalidate the trademark.
2. Difference
The absolute grounds and the relative grounds for trademark invalidation differ in terms of the concept of protection, so there are the following differences in the practice of the two grounds.
2.1 Different Subjects
Absolute grounds – Anyone can file based on this ground
Absolute grounds are intended to protect the relevant order of the state from being affected by the trademark registration system, so it allows anyone to request invalidation of a trademark based on absolute grounds, to supplement the limitations of the examiner's personal perception, which they cannot judge whether the trademark is detrimental to the state order through different perspectives in the process of examining trademark registration.
Relative grounds – Only prior right holder or interested party can file based on this ground
Relative grounds are intended to protect the rights from infringement. A non-interested party may not invalidate a registered trademark on the basis of relative grounds until the property owner filed an invalidation. In practice, if a trademark is associated with the prior rights of others, the registrant may obtain the rights legally through licenses, trademark co-existence agreement, etc., and the above agreement can only be seen by the registrant, right holder, and the Intellectual Property Office. If the Trademark Law arbitrarily allows anyone to file the invalidation of the trademark on the basis of relative grounds, it may not be able to play a role in protecting the prior rights, and it is more likely to make the prior rights not be able to be licensed.
2.2 Legal Liability
Absolute grounds – The use of the trademark is regulated by the administration.
The relevant provisions of the absolute grounds are Article 4, Article 10, Article 11, Article 12 and Article 19 of the Trademark Law. The more special of which is the provision of Article 10, that is, trademarks related to politics, ethnic discrimination, deceptiveness, detrimental to morals shall not be used or registered. If there is a violation of this provision, the administration may stop the applicant from using the trademark according to the Anti-Unfair Competition Law or the Advertising Law, and impose a fine in accordance with the law.
Article 4 and Article 19 of the Trademark Law are related to the act of registration and have nothing to do with the content of the trademark. Article 11 and Article 12 aim to the trademark that lacks significance, it shall not be registered as a trademark. But if the applicant uses a trademark that lacks significance, it does not violate the law if it is not false advertising.
Relative Grounds - The use of the trademark is stopped by the right holder.
The relevant provisions of the relative grounds are only for the trademark registration procedure. The prior right holder or the interested party can file an invalidation against the infringement according to Article 57 of the Trademark Law or Article 6 of the Anti-Unfair Competition Law.
2.3 Protection Period
Absolute grounds - Claim at any time
The national order does not change by the time of trademark registration. With the social development, the trademarks that do not violate the national order may now enter the public field , the most common situation is that the trademarks turn into common names, for which the examiner may determine that the trademark is invalid on the basis that the registered trademark lacks significance.
Relative grounds-Within five years from the registration date of the trademark, but no limitation for well-known trademarks.
Since the registration of the trademark, the right holder will start to use the registered trademark based on administrative credibility. If the registrant has less investment of the trademark in the early stage, the invalidation of the trademark will not cause too many losses. But if the trademark is registered five years later, they may investigate lots on the trademark to make consumers aware. If the right holder is still given the right to invalidate the trademark registering for more than five years, it will harm the consumers' interests and the registrant's trademark promotion investment.
Of course, the registration should not be protected in the case of bad-faith. According to Article 45 of the Trademark Law, the owner of a well-known trademark is not subject to the five-year time limit for malicious registration.
The absolute and relative grounds for trademark invalidation are different in terms of the subject, the legal liability and protection period. Specific analysis is required for specific cases on how to choose invalidation reasons.
2021-04-28
Borsam IP
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