If a trademark has been out of use for three years or more from its registration date, it is subject to revocation for lack of use under Chinese law. Be it a Chinese citizen trademark or an overseas trademark extending to China, if the owner does not use it for an uninterrupted period from registration, third parties may seek its revocation.

The trademark is thus not automatically invalidated if not fully utilized in China. However, in response to a third-party application, the trademark holder will be required to provide credible proof of its usage in China for all relevant services and goods. If the owner cannot establish effective use in China, they will lose the exclusive ability to use the trademark. Upon cancellation, others will be subsequently permitted to apply for a similar trademark.

Need for non-use cancellation

Any corporation or individual may file a cancellation petition with the Chinese Trademark Office after three years of non-use of the trademark.

A non-use cancellation is normally suggested if there are other existing trademarks preventing a trademark registration which have been granted for longer than three years. Under such cases, the registrants may attempt to have the barriers removed through non-use cancellations.

Complete vs. partial cancellation

When filing a non-use cancellation request, you may opt to seek to cancel all of the product classifications, or simply a portion of the items. According to current practice, when you choose to cancel all the products covered by the trademark, as long as the trademark owner produces proof of use on at least one of the types of goods using the mark, the trademark registration may be valid concerning all the goods.

However, when the non-use cancellation request is against a portion of the product categories, the trademark owner needs to show proof of use about each item of the goods, accordingly. Only those categories for which proof of use is presented may be kept, and the rest will be terminated.

It is recommended to submit a non-use revocation simultaneously with the invalidation request when attempting to nullify a bad-faith submission without overwhelming proof, in order to guarantee the invalidation is carried out.

Because many copyright

squatters register a huge number of trademarks only for hoarding them later on, the competitor party's trademark may be readily terminated for non-use even if there is inadequate proof of the other party's dishonesty or the company's recognition or popularity.

Under applicable trademark law, if a trademark has been authorized for more than 5 years and is in use, it may no longer be canceled unless it can be shown that the opposing party is acting in bad faith and the trademark is well-known. As a result, if the other party's trademark has been registered for more than five years, there is insufficient evidence to demonstrate the opposing party's bad faith, and the brand is well-known, a non-use revocation may be the only viable option.

Therefore, if the purpose of the non-use cancellation is to remove obstacles that block your trademark registration, and the scope of goods only partially conflict with each other, it is recommended to file the non-use cancellation only against the conflicting goods, which may improve the chance of success in removing obstacles.

Filing application

In general, a revocation petition based on non-use may be based on a declaration that the mark was not used for at least three consecutive years previous to the filing date of the cancellation application. In partial fulfillment of the requirements, the applicant may submit the findings of a quick Internet search as proof, for example, a print-out from a reputable web search engine indicating no 'hits' arising from the search of the owners and products protected by the disputed trademark.

Procedural Aspects of Trademark Cancellation for Non-Use:

● the mark should be used in China to be protected;

● the version in use must be identical to the one in the Chinese authorities database;

● all items and services protected by the trademark shall bear the registered trademark;

● starting from the date of registration the usage shall begin no later than three years afterward. If a trademark is granted for more than three years, it must have been used during the three years before the date of the non-use revocation action.

What does "real usage" entail, and how can it be proven?

Before, it was enough to simply submit a minimum amount of proof to indicate that a trademark had been used in the past. Fake usage records were also popular and were submitted in fraudulent misrepresentation with the sole purpose of blackmailing the true owner.

This is why China's rules and methods have significantly improved. Chinese inspectors are now much more meticulous in analyzing the proof of use, and authorities have also set up certain criteria to establish what may be deemed real use of the mark.

However, one thing should be very obvious from the start: just stating that you've used the brand, appeared in a specific exhibition, or negotiated a distribution arrangement with a potential Chinese company will not be sufficient. Documentation confirming that the trademark has been in use for the items claimed must be filed within 60 days of the date of notification of the action. A two-month timeline might turn into a major issue if the evidence has not been gathered and cataloged systematically over many years.

For example, evidence such as the following may be used:

● Proof of real sales in China, either in physical locations or online, of items with the trademark attached to the product, such as the product's sticker or packaging.

● Trade fair attendance documents (photos and video, booth leases, etc.) verifying attendance in China's trade shows (details of goods shown, etc.).

● Several papers are required for obtaining trade licenses in China, such as invoices confirming sales, border control export documents, and other paperwork. Evidentiary documentation must properly identify the goods and their trademarks (such as on the invoices).

● Photos of signs, stores, and places of the sale in China with the trademark attached

● Advertising for goods and services in China's periodicals, newspapers, and radio and television broadcasts

In contrast to the above, the following are not regarded as acceptable evidence of trademark use:

● Contracts with Chinese business partners especially if the goods in question can't be determined

● Samples or presents that include the trademark.

● Testimonials, whether written or spoken

Trademark usage evidence is a critical asset to your business and not only for defending against trademark revocation claims for non-use. 

Please contact us (inquiries@ChinaLawSolutions.com) to get a recommendation on a firm which can assist your business with trademarks in China. All inquiries are treated as confidential.