Petition for cancelling a registered trademark based on nonuse in China

What is the cancellation for trademark based on nonuse in China?

Any third parties (including individual and legal entity) can file a petition for cancelling a registered trademark based on nonuse for three consecutive years in China. In other words, it is available to file this petition after the trademark has been registered for 3 years. You must make sure the actual valid registration date if the trademark was opposed by the third party but successful registered finally.

How to file petition for cancelling a registered trademark based on nonuse?

From Jan.1, 2022, CNIPA requires the petitioner should submit evidence of nonuse. This is a new requirement. However, it is not strict yet at present. It is possible to simply submit a printout of the search results on the Internet.  

You can file a petition to cancel full or partial goods/services. CNIPA will notify the registrant should submit the effective and lawful evidence used on the full or partial goods/services in past three years within two months from the date of receipt. If the registrant fails to submit evidence of use within the stipulated period, CNIPA will issue a cancellation decision based on nonresponse. If the registrant well receives the notification and submits the use evidence, CNIPA will unilaterally review the evidence to make a decision without the petitioner’s observation in this procedure. Namely, the petitioner has no way to cross-examine the evidence in this procedure. Generally, it will take about 9-12 months to obtain the decision.

What are the next procedures after receiving the cancellation decision based on nonuse?

Whoever you are the petitioner or the registrant, you can file a review petition before TRAB of CNIPA if you are not satisfied with the decision within 15 days from the date of receipt. In review procedure, the petitioner has a way to receive and file an observation for all evidences submitted by the registrant. TRAB will be stricter with all evidences. Generally, it will take about 9-12 months to issue a review decision.

After receiving the review decision, if any parties are not satisfied with the review decision, it is possible to initiate an administrative litigation before Beijing IP Court within 30 days from the date of receipt. Generally, it will take about around 1 year to obtain the first-instance judgment.

If any parties are not satisfied with the first-instance judgment, it is possible to appeal before Beijing Higher Court within 15 days for domestic party or 30 days for foreign party from the date of receipt. It will also take about 1 year to obtain the appeal judgment.

If any parties are still not satisfied with the appeal judgment, it is possible to file a re-trial petition before Supreme People's Court within 6 months from the date of receipt.

What types of evidence are recognized as effective and lawful use?

Types of Evidence of Use of Goods Marks (Used in China and clearly showing the trademark and date):

a. Use on the outer packaging, container, and label of the commodity, or use on the attached label, product manual, introduction manual, etc. of the commodity;

b. Use in transaction documents related to commodity sales, including commodity sales agreements, invoices, bills, receipts, documents, commodity import and export quarantine certificates, customs declarations, etc.;

c. Use in radio, television and other media, or in publications approved for public distribution by the publication administration department of the State Council;

d. Use in billboards, postal advertisements or other advertising methods;

e. Use at exhibitions and expositions approved by the relevant administrative departments of governments at all levels, including the printed matter and other materials, photos, etc. of the use of the trademark provided at the exhibitions and expositions.

Types of Evidence of Use of Service Marks (Used in China and clearly showing the trademark and date):

a. Direct use of services, including introduction manuals, service place signs, decorations, posters, menus, registration certificates, price lists, registration cards, lottery tickets, stationery, letterheads, and other supporting utensils, etc. used for services;

b. Use on documents related to the service, including remittance documents, invoices, delivery notes, and agreements for the provision of services.

Need help submitting evidence of use to against a cancellation petition based on nonuse?

If you need our assistance, please feel free to contact us to see how we can help you to maintain your trademark registered.