Previously, the Trademark Office website published an article titled "Whether the right holder still needs a "quarantine period" when applying for registration after a maliciously registered trademark is invalidated - Issues concerning the application of Article 50 of the Trademark Law." The article points out that the exceptions to the one-year "quarantine period" include: (1) The provisions of Article 50 do not apply to registered trademarks that have been revoked due to non-use for three consecutive years; (2) trademarks are declared invalid due to hoarding or malicious preemptive registration. Article 50 does not apply to trademarks.

Article 50 of the Trademark Law stipulates that if a registered trademark is revoked, declared invalid or will not be renewed upon expiration, the Trademark Office shall, within one year from the date of cancellation, invalidation or cancellation, revoke the same trademark. or similar trademark registration applications will not be approved. That is to say, a one-year "isolation period" is set for a trademark that has been revoked or canceled. Just like the isolation period during the epidemic is to prevent the spread of the virus, the isolation period after the cancellation or cancellation of a registered trademark is to avoid the coexistence of the two in the market. The possibility of confusion and misunderstanding among the relevant public caused by identical or similar products.

Excepts for the one-year "quarantine period":

(1) The provisions of Article 50 do not apply to registered trademarks that have been canceled due to non-use for three consecutive years

Based on the above legislative purposes, if a registered trademark has been canceled or has been canceled for less than one year due to non-use for three years, Article 50 of the Trademark Law shall apply and application for trademark registration of the same similar trademark shall not be approved for registration.

(2) Article 50 does not apply to trademarks that have been declared invalid due to hoarding or malicious registration of trademarks

For registered trademarks, especially those that have been declared invalid due to hoarding or malicious registration of trademarks, If it has been one year, Article 50 of the Trademark Law shall apply and it is against the purpose of the legislation to disapprove an application for registration of an identical or similar trademark by the prior right holder.

In practice, prior rights holders file a trademark registration application for their own trademarks in order to maintain their legitimate rights and interests while declaring invalidity against hoarded or maliciously registered trademarks. If the current review standards are followed, it will lead to a series of adverse consequences:

Firstly, a trademark registered in bad faith should not have been approved for registration. After being declared invalid, its effectiveness will be invalid from the beginning, and its prior use behavior It is also illegal to use, and it is difficult to produce a certain effect against other people's trademarks.

Secondly, the prior right holder’s inability to determine when his trademark registration application may be authorized will lead him to continuously file trademark registration applications in order to safeguard his legitimate rights, which will only increase the burden on the prior right holder.

Thirdly, if the current review standards are followed, it is very likely that the earlier application of the prior right holder will be rejected, while other parties will later apply for approval for registration, thus triggering a series of subsequent trademark ownership disputes.

Fourth, if the existing review standards are implemented, a large number of review cases will face failure in subsequent administrative litigation.

Fifth, the one-year quarantine period is usually not considered in judicial review. If an invalid trademark is rejected or the trademark is not registered, our office will make a heavy decision. If the existing review standards are implemented, effective court judgments and rulings will become unenforceable, damaging the image of law-based administration.

In summary: The first suggestion is to amend the relevant provisions of Article 50 of the Trademark Law in the subsequent revision of the law. Establish a relevant system whereby trademarks that are determined to be registered in bad faith by an effective ruling can be directly transferred to the name of the real right holder. The second is to revise the review and trial standards applicable to Article 50 of the Trademark Law as soon as possible. Third, currently, trademark registration applications involving circumstances under Article 50 of the Trademark Law should be reviewed and heard in accordance with the first-to-application principle during registration review, opposition, and review trials. Trademarks that have expired of rights will no longer be rejected or not registered. In the subsequent registration announcement process, the cited trademark will be canceled, revoked or invalidated for one year before being registered and announced.