TRAB Changes Its Policy in Review of Refused International Registrations

The Trademark Review and Adjudication Board (TRAB) has recently changed its policy in review of refused international trademark registrations extended to China through Madrid Agreement or Madrid Protocol.

Two years ago, the TRAB adopted a special examination policy in review of international registrations that had been refused for protection in China, that was, if an international trademark was refused by the Trademark Office on relative grounds, i.e. because of the existence of a prior registration, the refusal would not be overcome even if the prior registration had been assigned to the applicant of the international registration or had been cancelled due to non-use by the time the TRAB reviewed the contesting grounds. The reason given by the TRAB was that because the registration date of an international trademark is its application date, international registrations approved under such conditions (assignment or cancellation of the prior registration) would create co-existence of the international registration and the prior registration in the period between the registration/application date of the international mark and the date of assignment. As a result, the applicant of an international trademark had to abandon its extension and file a new extension after the prior registration is assigned or cancelled.

The TRAB's policy had caused great inconvenience and had been much controversial. Now, the TRAB will accept assignment or cancellation of the prior registration as valid grounds for review of refused international registrations and a refused international trademark can be allowed in the review procedure if the conflict with prior rights is eliminated before the TRAB makes a decision on the review.