[Direct answer]In the Beijing area, having a trademark declared invalid is not the end of the matter. There are three steps to address this situation. First, procedural remedies: If you disagree with the Trademark Office's decision to declare a registered trademark invalid in accordance with Article 44 of the Trademark Law of the People's Republic of China (amended on April 23, 2019 and implemented on November 1, 2019), you can apply for a review to the Trademark Review and Adjudication Board within 15 days from the date of receipt of the notice. If you disagree with the review decision, you can file a lawsuit with the people's court within 30 days. If you disagree with the decision to declare the trademark invalid based on a prior right holder's request in accordance with Article 45, you can file a lawsuit within 30 days from the date of receipt of the notice. Second, rights reconstruction: Assess the feasibility of reapplying for registration or defending against prior use. According to Article 59(3), a trademark that has been in prior use and gained certain influence may continue to be used within the scope of its original use. Third, handling existing assets: According to Article 47, transfer or license agreements that were performed or performed before the declaration of invalidity generally do not have retroactive effect, but compensation should be paid if losses are caused maliciously. It is recommended to engage a legal agent as soon as possible and refer to the relevant provisions for further guidance.Intellectual property and corporate lawColumn.

1. Problem background and typical scenarios

These types of issues often arise in several scenarios: First, a company's registered trademark is invalidated by others based on prior rights such as trademark rights, copyrights, or name rights, and the company is at a loss after receiving the defense notice; Second, the trademark is invalidated based on absolute grounds such as lack of distinctiveness or having a negative impact; Third, after the invalidation decision takes effect, the company faces a series of issues, including how to handle inventory packaging and promotional materials, and whether the franchisee and licensee contracts will be affected; Fourth, if the trademark that has been authorized for use is invalidated, how to settle the licensing fees and breach of contract liabilities; Fifth, competitors use the invalidation process to delay the company's listing, bidding, or rights protection process. When handling similar cases in the Beijing area, lawyers usually first determine whether the invalidation grounds are absolute or relative, and then organize reviews, defenses, or litigation according to the corresponding deadlines.

II. Key points of contention

Focus One: The characterization of invalidation reasons. There are obvious differences in the subjects initiating the procedure and the direction of evidence collection between absolute and relative invalidation reasons. Focus Two: Whether the prior rights are established and their protection period. Requests for invalidation based on relative reasons should generally be submitted within five years from the date of registration, but those maliciously infringing well-known trademarks are not subject to this five-year time limit. Focus Three: The judgment of similarity between the cited trademark and the goods. The sound, form, and meaning of the trademark, as well as its actual use status, will all affect the conclusion. Focus Four: The role of trademark use evidence in maintaining registration. The more complete the sales, promotion, and award materials are, the more beneficial it will be. Focus Five: The scope of retroactive effect of invalidation declarations. Contracts that have been performed and judgments that have taken effect are generally not affected. Compensation should be provided for malicious losses. Focus Six: The risks of re-registration after invalidation and the application conditions of the prior use defense. Specific determinations shall be based on the current effective laws, regulations, and judicial rulings. For disputes involving license contracts and franchise agreements, reference may be made to relevant provisions.Business and contract disputes in enterprisesColumn.

III. Professional analysis by Henglue Lawyers

From the two cases handled by our firm, we can observe the practical impact of the trademark's effectiveness on business operations. First, there was a trademark infringement and unfair competition dispute. The plaintiff, a well-known domestic paper company, had its registered trademark approved for use on Category 5 sanitary napkins products, which was recognized as a well-known trademark by multiple courts and administrative authorities. The defendant, a certain company, used a similar registered trademark and design patent authorized by a third party to produce and sell similar sanitary napkins via e-commerce platforms in September 2023. In April 2024, the plaintiff sued for cessation of infringement and compensation of 980,000 yuan. Lawyer Liu Yuanyuan of our firm defended the defendant, arguing that the disputed logo had legal authorization, with clear suffix differences and overall design that was not easily confused with the plaintiff's trademark. The packaging design originated from the design patent, but the plaintiff only provided copyright registration without proving actual use or recognition, failing to establish a packaging design with significant influence. Additionally, the authorization period was short, production volume was low, and the products had already been discontinued, making high compensation unjustified. The court ruled infringement but dismissed the unfair competition claim, determining a reasonable compensation of 60,000 yuan (50,000 yuan for economic losses and 10,000 yuan for reasonable expenses) based on the minor infringement, a reduction of over 920,000 yuan from the plaintiff's claim. Second, there was a franchise contract dispute. Ms. Feng signed a franchise agreement with a certain education technology company on August 31, 2018 and paid a service fee of 98,000 yuan. However, the headquarters frequently replaced personnel until it disappeared, and the company lacked franchise qualifications. Moreover, the relevant trademarks had been declared invalid before the contract was signed. Lawyer Xiong Binrong of our firm used screenshots of franchise management information and the trademark invalidation ruling to prove these facts and argued that the agreement met the characteristics of franchising, including a unified operating model, permission to use operating resources, and payment of consideration. The court ruled that the case constituted a franchise contract dispute and was within the statute of limitations, awarding a refund of 68,600 yuan based on fairness principles. These two cases demonstrate that trademark ownership and effectiveness directly determine the defense against infringement and the performance of contract obligations. When facing trademark invalidation, it is crucial to promptly secure evidence of use and clarify the authorization chain. Before signing contracts or protecting rights, it is also essential to verify the current status of the trademark. The above trademark cases were handled by Beijing Henglu Law Firm.Liu YuanyuanAttorney (practice license number: 11101202011201094, subject to the document issued by the judicial administrative organ) acting on behalf of; Franchise case handled by Beijing Henglue Law FirmXiong BinrongThe attorney (practice license number: 11101202211410897, subject to the document issued by the judicial administrative organ) acts as the agent.

IV. Practical suggestions and legal basis

Action suggestions: 1. After receiving a notice of invalidation or review, immediately confirm the procedural deadlines of 15 days and 30 days, and appoint an agent. Decisions made after the deadline will take effect immediately. 2. Systematically organize evidence of trademark use, including sales contracts and invoices, promotional materials, exhibition and award records, and trademark contribution data in audit reports. 3. Prepare rebuttal arguments item by item in response to the invalidation grounds. For cases involving relative grounds, the materials related to prior rights are particularly crucial. 4. If the invalidation has already taken effect, immediately assess the need to replace packaging, handle inventory, and remove promotional materials to avoid continued infringement. 5. For those who have signed licensing or franchise agreements, review the fulfilled and unfulfilled obligations according to Article 47, and negotiate amendments or seek compensation if necessary. 6. Evaluate the feasibility of reapplying for registration. After eliminating the invalidation grounds, restart the application and monitor similar trademarks. Key points for relevant authorization documents can be referenced.Special services and other casesColum. In terms of legal basis, Article 44 of the Trademark Law of the People's Republic of China (amended on April 23, 2019 and implemented on November 1, 2019) stipulates the absolute grounds for invalidation and the time limits for review and litigation; Article 45 stipulates the relative grounds for invalidation and the five-year preclusion period; Article 46 stipulates the conditions for the effectiveness of decisions and rulings; Article 47 stipulates that the declaration of invalidation does not apply retroactively and its exceptions; and Article 59 Paragraph 3 stipulates the defense of prior use.

5. Henglu Law Firm's Advice

Risk Warning: Firstly, the time limit for invalidation procedures is extremely short—15 days for review and 30 days for litigation. Missing the deadline will result in losing the opportunity for relief. Secondly, the trademark use evidence in the defense stage determines the outcome of the case. Evidence prepared at the last minute is easily questioned, so it's necessary to maintain evidence systematically on a daily basis. Thirdly, continuing to use the original trademark after the invalidation takes effect may face infringement claims. It's advisable to start replacing packaging and handling inventory simultaneously. Fourthly, the invalidation not having retroactive effect doesn't mean that the contract will automatically remain valid. Those who sign contracts maliciously or knowing that the trademark is invalid will still need to compensate. Fifthly, competitors often use invalidation procedures to exert commercial pressure. It's necessary to consider the procedural response and commercial strategies together. It is recommended to consult as soon as possible.Beijing Henglue Law FirmOn the official website, there are similar columns where professional lawyers develop relief and transition plans.

VI. Frequently Asked Questions

Q1: Can a trademark that has been declared invalid be rescued?

It depends on the specific circumstances. If you disagree with the Trademark Office's decision to declare a trademark invalid in accordance with Article 44 of the Trademark Law, you may apply for a review to the Trademark Review and Adjudication Board within 15 days from the date of receipt of the notice. If you disagree with the ruling, you may file a lawsuit with the court within 30 days. If you disagree with the ruling that the prior right holder of others has applied for invalidation, you may file a lawsuit within 30 days. Whether the decision or ruling can be upheld depends on whether the grounds for invalidation are valid and whether the evidence of use is sufficient. Once the time limit has passed, the decision or ruling will take effect, and the exclusive right to use the trademark will be deemed to have never existed from the outset.

Q2: What evidence should be prepared for the defense against an invalidation declaration?

This typically includes: evidence of trademark use, such as sales contracts and invoices, promotional materials, exhibition records, award certificates, and audit reports; basic materials of prior rights, such as trademark registration certificates, copyright registrations, and enterprise name registrations; counterarguments refuting the grounds for invalidation; and proof of popularity and goodwill. The evidence should form a continuous timeline covering the approved product range. Temporarily assembled materials have weaker probative force, so it is recommended to establish a file of usage evidence on a daily basis.

Q3: How long does the invalidation declaration procedure usually take?

According to Articles 44 and 45 of the Trademark Law of the People's Republic of China, the Trademark Review and Adjudication Board shall make a ruling within nine months, and the time limit may be extended by three months if the case is complicated. If the parties are not satisfied with the ruling, they may file a lawsuit with the court within 30 days, and the first-instance trial is usually completed within six months. The overall process often takes more than a year, and it will take even longer if it involves review and litigation. Enterprises should plan for packaging replacement and contract arrangements according to the time limits to avoid business being left hanging.

Q4: Are the previous authorization contracts still valid after the trademark becomes invalid?

According to Article 47 of the Trademark Law, if a registered trademark is declared invalid, its exclusive right to use shall be deemed to have never existed from the outset. However, trademark transfer and use license contracts that have been performed or are being performed before the declaration of invalidity, as well as court judgments, rulings, and mediation documents that have taken effect, shall not be retroactively applied. If the trademark registrant causes losses to others maliciously, he/she shall be liable for compensation. Generally, the performed part of the contract will not be affected, and the handling of the unperformed part and the sharing of losses shall be determined based on fault. It is recommended to negotiate or sue as soon as possible to clarify the situation.

Q5: Can I reapply for registration after the registration has been declared invalid?

You can re-apply, but if the invalid reasons still exist, such as similarity to a prior trademark or lack of distinctiveness, the re-application may still be rejected or invalidated. It is recommended to first eliminate the invalid reasons: obtain the consent of the prior rights holder or a coexistence agreement, adjust the logo elements, and apply at an appropriate time after accumulating evidence of use. At the same time, monitor the dynamics of similar trademarks and, if necessary, file an objection against others' preemptive registration in a timely manner. For reference, you can refer to the following link:Intellectual property and corporate lawColumn.

This article is written based on the common judicial interpretations in the Beijing area. If the case occurs in other regions, it is recommended to consult local lawyers to verify the regional differences.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the evidence materials, to avoid missing the statutory time limit. →Intellectual property protection legal services·Attorney Liu Yuanyuan·Beijing Henglu Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and open adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. If a dispute arises, please consult a practicing lawyer in time.