The function of a trademark is to identify the source of goods or services in commerce. Once a trademark is registered, the owner should use it on the approved goods or services in the commercial. Otherwise, it will be likely canceled by trademark cancellation request based on non-use for continuous three years.
REGULATIONS OF NON-USE TRADEMARK CANCELLATION
According to article 49 of the Trademark Law of China, where the use of a registered trademark has ceased for three consecutive years without reasonable grounds, any entity or individual may apply to the Trademark Office for cancellation of the registered trademark.
To judge if it is available to cancel a trademark based on non-use, the first thing is to check if the trademark is registered or not, and the earliest cancelation date is three years after the registration date.
A non-use cancellation is due to the lack of use by the trademark owner of any licensed party. Hence, if the trademark owner provided adequate use evidence in the cancellation response, the examiner would affirm the actual use in commercial and maintain the registration.
Therefore, it is advisable to investigate before filing the cancelation through a local search engine, e-commerce platform, and social media platform to see any information of selling or advertising of the trademark on the market.
ALTERNATIVES OF INVALIDATION
Trademark invalidation has a similar function to remove a registered trademark, but it doesn’t apply for all situations, only if the trademark with defects, e.g., violating the laws or infringing others' rights, might be removed by an invalidation. But for healthy trademark registration, it is the only way to remove it. Hence, in some situations, it is an alternative choice to remove the trademark.
RESPONSE TO A TRADEMARK CANCELLATION
Once the registered trademark is challenged by cancellation, the trademark owner has a time limit of two months to file evidence to prove its use. The deadline to respond to the cancellation is non-extendable and restorable, but available to file an appeal for trademark review if the decision is negative for you, which costs extra costs and more time. So, it is important to prepare sufficient evidence to support the fact of the actual use of the trademark.
HOW TO PREPARE THE USE EVIDENCE?
The evidence shall meet the requirement in terms of time, territory, and designations. The use evidence of the canceled trademark should be generated during the prescribed three-year period, which is calculated back from the application date of the cancellation. For example, if the cancellation request was filed on January 1, 2020, then the required evidence should be concerned on the related fact from January 1, 2017 to January 1, 2020. Also, the use evidence needs to clearly show the trademark on packages, transaction documents, products, advertisements, or other materials in which the trademark was used as an identifiable sign. Of course, regarding the designated goods/services, the use evidence is required to be related.
A non-use trademark may occupy a public source of trademark registration and prevent later applications with sincere intentions and demands. Taking good use of the non-use cancellation may help you to remove those live trademarks but actually dead in the market and release more place for those who want a trademark for its running business.
The most usual situation is that the prior registered trademark will possibly be cited in the trademark refusal of your application. If the trademark has been registered for more than three years, but you can hardly find information in the relevant market, it’s advisable to cancel the registration first and subsequently file a new application. On the contrary, to avoid non-use cancellation, the trademark registrant should properly collect and keep the use evidence in time. If necessary, the trademark can be filed every three years in case of a malicious cancellation petition.
For more information and professional advice concerning the Chinese trademark cancellation, feel free to contact a local trademark attorney to help you out!