The China National Intellectual Property Administration (CNIPA) has recently applied stricter criterion for the formal examination of trademark non-use in China, by raising the applicant’s burden of prima facie proof in non-use cancellation procedures. These changes represent CNIPA’s determination to deal with malicious non-use cancellations in a more rational manner. The requirements for filing non-use cancellations are getting higher, but we believe this will not create substantive obstacles if the requirements are satisfied.
1. Changes in Formality Examinations
According to Article 49 of the PRC Trademark Law, a three-year grace period from the registration date is granted to trademark registrants. Any organization or individual may file a non-use cancellation with the CNIPA against a trademark registration. It is easy to initiate a non-use cancellation action in principle, as the burden of proof is on the trademark registrant to submit evidence of use or justifiable reasons for non-use.
The requirement for a formality examination of a non-use cancellation is based on Article 65 of the Implementation Regulations for the Trademark Law of the People’s Republic of China which stipulates that the evidential materials shall be attached to the non-use cancellation application.
The CNIPA has adopted higher requirements for formality examinations since the implementation of the Guidelines for Trademark Examination and Adjudication in 2022, which states that the applicant should submit evidence of a preliminary investigation in a non-use cancellation.
In the past, the CNIPA would accept a simple search result of the registered trademark together with the specification of the goods/services covered by the trademark in a renowned search engine in China, such as the search pages of “JUNHE (Trademark) & Intellectual Property Agency Services (Services)”.
However, the CNIPA has recently issued official notifications to applicants of amendments to non-use cancellations, requiring the submission of detailed information of the trademark registrant and more pages of results from different search engines. The formality examination criterion regarding evidence of preliminary investigations is becoming more specific and stricter.
2. Reasons for the Changes
The number of non-use cancellations including appeals has significantly risen in China in recent years. In specific circumstances, a same mark repeatedly encounters non-use cancellations where registrant has been required to submit evidence of use time and again. Such non-use cancellations are deemed as malicious intent to disturb the business operation of the trademark registrant, which is contrary to the purpose of the law to motivate trademark use.
As per The Work Plan for Systematic Governance of Malicious Trademark Registration to Promote High Quality Development (2023-2025) published on April 20, 2023, the CNIPA plans to rely on evidence submitted by the trademark registrant in previous cases within 12 months of the non-use cancellation examination. This is to reduce the burden of proof on the trademark registrant caused by repeated malicious non-use cancellation actions.
The CNIPA has become stricter in its non-use cancellation actions to curb cancellation procedures that disturb market order and registration management. The recent change in formal examinations also reflects the CNIPA’s determination to deal with malicious non-use cancellations and to guide non-use cancellation actions to return to rationality, refocusing the trademark system on its fundamental purpose.
3. Strategies and Suggestions for Coping with the Changes
Though the requirements for filing non-use cancellations is higher, it will not create substantive obstacles to non-use cancellation actions if such requirements are satisfied by the applicant.
When filing a non-use cancellation application, an applicant should provide preliminary evidence that the trademark subject to non-use cancellation has not been used for three consecutive years, and include the following:
a) Basic information of the trademark registrant, including the scope of business or operation, the status of the business or existence, and the trademark registration status, etc..
b) The preliminary evidence of the trademark subject to the non-use cancellation should be searched and investigated on comprehensive online platforms and industry websites for the goods/services covered by the trademark and other platforms. The search results should include screenshots of the entire pages, starting from the homepage for five consecutive pages, and at least three platform search results should be provided.
These changes are not intended to restrict non -use cancellations filed in the name of others out of reasonable business needs, but to discourage misuse. Thus, the above changes will not affect a non-use cancellation filed anonymously, if such requirements are properly handled. Companies can still engage trademark agencies to file anonymous non-use cancellations if needed.
For applicants, using a different entity’s name to file a trademark non-use cancellation application and submitting as much proof as possible to prove the target trademark is idle with no actual commercial use would be helpful, to avoid being deemed as a malicious non-use cancellation. Batch filings of non-use cancellations against a single registrant in a short time period should also be avoided.
For further information, please contact:
XU, Chumeng (Jessica), Partner, JunHe
xuchm@junhe.com