The China National Intellectual Property Administration (CNIPA) has issued rectification notices to certain trademark agencies and law firms concerning non-use cancellation applications. The move removes the ability to file cancellation requests arbitrarily and elevates the standard of evidence required for these applications.
The rectification notice mandates that applicants provide preliminary evidence demonstrating that the registered trademark has not been used in the market for over three years. The required search must encompass at least three platforms, with each search engine screenshot containing sufficient information. They are also now expected to supply preliminary information about the registrant, such as business scope and operational status, amongst other things.
Trade mark challenges in China
Historically, such rectification requirements have been rare.
It appears likely that the CNIPA has implemented these rectification notices in response to the high volume of non-use cancellation applications, with many registered trademarks being repeatedly challenged. This situation imposes a significant burden on both registrants and the CNIPA.
Some applicants exploit the process in bad faith, attempting to disrupt competitors' businesses by filing non-use cancellation requests. We believe that, in an effort to curb malicious cancellations, the CNIPA now requires applicants to provide stronger evidence to substantiate their claims.
Additionally, there is a legal basis for this requirement. Article 66 of the Regulations for the Implementation of the Trademark Law states:
"Where a registered trademark has not been used for three consecutive years without good reasons as described in Article 49 of the Trademark Law, any entity or individual may apply to the Trademark Office for cancellation of the registered trademark, and a relevant explanation shall be attached to the application submitted."
This provision indicates that applicants must present relevant facts when filing for cancellation.
Expected evidence requirements
Our recent practice and insights from various sources suggest that the CNIPA will further quantify the evidentiary requirements for applicants seeking trademark cancellation. This will likely be in line with information currently required of some applicants, which includes evidence from a comprehensive range of online platforms; including mainstream search engines (e.g., Baidu, Bing, Sogou), e-commerce platforms (e.g., Taobao, Jingdong, Pinduoduo), and social media (e.g., WeChat, Weibo, Xiaohongshu).
These searches must focus on the trademark's registered goods or services within the relevant industry. In this regard, we have consulted with the CNIPA and obtained oral confirmation of the same.
Formal guidance
At the time of writing, the CNIPA has not issued formal written guidance updating the evidentiary requirements for non-use cancellation applications. We shall continue to monitor any changes in these standards and provide timely updates.
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