As part of the examination process of trade mark applications in China, non-use cancellation proceedings are a relatively inexpensive option which trade mark applicants can use to overcome the citation of prior trade mark registrations against their application.
This article reviews an important change to non-use cancellation proceedings in China which applicants should be aware of if choosing this option.
Advantages of non-use cancellation proceedings
Filing non-use cancellation proceedings against a cited trade mark registration in China has several advantages:
- Proceedings are relatively cheap to file and quick to prosecute.
- Proceedings can be filed anonymously in the name of another party – i.e. strawperson proceedings are possible.
- The burden of proof is on the trade mark owner to prove that the cited trade mark registration is in use.
Non-use cancellation proceedings are particularly useful when removing third party copycat registrations that were obviously filed in bad faith. In these cases, it is most likely that the trade mark owner will not defend the proceedings as there is no history of use.
However, the ease with which proceedings can be filed also inevitably exposes the system to misuse. Situations arise where parties file non-use cancellation proceedings against trade mark registrations which they know are in use, or where parties continually file proceedings against the same trade mark registration by using a different applicant each time.
New evidentiary requirements
To safeguard against such misuse and abuse, the China National Intellectual Property Administration (“CNIPA”) has updated its trade mark practice guidelines and raised the evidentiary bar to file non-use cancellation proceedings.
In 2021, the CNIPA made it a requirement that applicants provide evidence of an investigation regarding the use of the trade mark under attack, in order for a proceeding to be accepted. In practice, the CNIPA took a relaxed approach to this evidentiary requirement and accepted evidence of investigation of use that was basic. Usually, this amounted to online searches regarding the trade mark owner and the cited trade mark registration.
However, from the start of 2025, the CNIPA has tightened the evidentiary requirements and will issue a notification for amendment if it considers the evidence provided of the applicant’s investigation is insufficient.
Suggested evidence of investigation of use
To ensure that applicants meet the new evidentiary requirements, we suggest that the following evidence of investigation of use is compiled and submitted:
- Screenshots of online searches for (i) the trade mark owner together with the cited trade mark registration and the registered goods/services (ii) the trade mark owner together with the cited trade mark registration and (iii) the cited trade mark registration together with the registered goods/services.
Searches should be performed on at least 3 Chinese platforms and the first 5 pages of search results should be provided at a minimum.
- Information about the trade mark owner including its business premises, business scope and current status.
- Information and evidence about the trade mark owner’s sale of goods or provision of services.
- Information about the cited trade mark registration.
- Information about the applicant and relevant trade mark registrations/applications.
- A signed undertaking from the applicant confirming that the non-use cancellation proceeding was filed in good faith and that no adverse information has been withheld.
Conclusion
Clearly, it is now more important than ever for trade mark applicants to get everything right at the start before filing non-use cancellation proceedings. Nevertheless, despite the new evidentiary requirements, the ultimate onus still lies on the trade mark owner to prove that the cited trade mark registration has been in use.
If trade mark owners require assistance with any of the above, James & Wells has a dedicated bi-lingual Asia Team which specialises in trade mark prosecution and enforcement including the filing of non-use cancellation proceedings in China.
About the author:
Edward Chen is a Taiwanese born and New Zealand educated trade mark lawyer with a background in commercial law. The majority of Edward’s work concerns trade mark law and practice, with a particular focus on registering and clearing trade marks for use in Mandarin-speaking countries.
