This article discusses the non-use cancellation action concerning international registrations, including requesting for a non-use cancellation action against others, and responding to a non-use cancellation filed by others.

-  Request for a non-use cancellation action

It is available for any entity or individual to initiate a non-use cancellation action against a registered mark three years after its approval of registration.  There is no time limit to request a non-use cancellation.

For national registrations, a request for cancellation on the ground of non-use for three consecutive years should be filed three years after the date of registration publication.

While a request for cancellation of a registered international trademark on the ground of non-use for three consecutive years should be filed three years after the expiration of the 12 or 18 months period of refusal.  Where an international trademark is under the procedure of review for refusal or under the procedure of opposition after the expiration of refusal period, such a request for cancellation should be filed three years after the date of the decision to approve the registration made by CNIPA entering into force.

The request for a non-use cancellation against a registered mark should be filed for one mark in one class.  If the mark covers multiple classes, multiple non-use cancellation actions will be required to cancel the whole mark.  Meanwhile, partial non-use cancelation action is available; the applicant could file non-use cancellation action against some classes or some particular goods or services of a registered mark.  When a partial non-use cancellation action is filed against a registered mark, the registrant will be requested to submit evidence for the particular goods or services.

-  Respond to a non-use cancellation action (submitting use evidence)

For international registrations, the CNIPA usually issues the notification of submitting use evidence to the representative recording before WIPO, or the holder when there is no representative before WIPO, for the mark directly.  If any Chinese trademark agency ever represented the holder, dealing with issues for the international registration, such as filing review of refusal, obtaining certified copy of trademark registration certificate, etc., the notification will be sent to the Chinese trademark agency as well.

The time limit to respond to the non-use cancellation action is 2 months beginning on the date the representative recording before WIPO or the holder or the Chinese trademark agency receives the notification.  The time limit cannot be extended and there will not be a supplementary filing period.  Therefore, the holder must submit all arguments and evidence within the 2 month time limit.

The foreign representative or the holder should keep the original copy of the notification as well as the envelope well and send them to the Chinese representative if the holder decides to respond to the non-use cancellation action.

The holder must submit evidence to CNIPA that they used the mark over its designated goods/services in mainland China during the past three year; the exact duration of dates is specified in the notification.  Alternatively, the client must provide a justified reason for not using the mark.  Otherwise, the CNIPA will cancel the international registration in China for non-use.

Use evidence may include documents relating to sales, advertising, manufacturing, imports and/or exports, honors, awards, etc. related to the Chinese market.  The evidence of use should show that the mark has been publicly used in commercial activity.  Self-made evidence (such as brochures or internal documents), alone, will have a very weak probative value, but it can be corroborated with other reliable evidence.

There is no specific requirement regarding the quantity of evidence.  The evidence should show the mark, the goods or services of the mark, the user of the mark (the registrant or its licensee(s); in the case of licensee, evidence proving the license relationship should be provided), the usage date should fall within the prescribed three years.

As mentioned above, a partial non-use cancellation can be filed against a registered mark.  When a partial non-use cancellation action is filed, the registrant will be requested to submit evidence for the particular goods or services.  Subclass system will be adopted in such case, that is, the evidence for one designated goods or services will help to maintain the registration of the mark over all of the similar goods or services.

If no use evidence is available, a justifiable reason for the non-use of the trademark is required, which may include: extraordinary event beyond the registrant's control, government restriction, or bankruptcy.

Originally published 24 April, 2020

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.