A Trademark Registration in Danger Due to a Flaw in Business LicenseDATE：2020-02-20 FROM：LexField
Amy Zhang / Yuan Yuan
• Fake business license could result in invalidation of a trademark registration.
• Deregistration of registrant would be a favorable result in an invalidation case.
In invalidation cases, review of the scope of rights of the registrant, strong evidence and logical arguments are indeed important to assess the legitimacy of the registration. Within the totality of evidence, sometimes checking the status of the registrant's business license can be quite decisive in the entire matter.
Recently, we have received several favorable decisions on invalidation, in which the China National Intellectual Property Administration ("CNIPA") found the business license submitted by the registrant is false or the company has been deregistered.
In those cases, the chances of success for the invalidation action were lower due to the lack of direct evidence of bad faith or prior use by the client. However, in our detailed due diligence, we found the company was actually "deregistered" or the information recorded in the business license was not in accordance with what was submitted and filed by the registrant. The CNIPA took this evidence into consideration and invalidated the registration after a comprehensive review.
Our recent successes must be viewed in conjunction with the official court guidelines. According to guidelines issued by Beijing High People's Court in 2019, in an administrative case of trademark invalidation, the revocation of a business license or the deregistration of a business cannot be the sole reason to invalidate a registration. Therefore, when filing an invalidation, we recommend raising other claims in addition to the flaw in the business license of the registrant. However, it is the flaw in the business license that would substantially affect the examiner's discretion.