Whilst there is no mandatory use requirement for a trade mark registration in China, any third party can apply for a full or partial cancellation of a Chinese registration that has been registered for 3 years or more on the grounds of non-use.
The total number of new trade mark filings in China is now the largest in the world – about nine million per year. Accordingly, cancellation actions based on non-use for 3 consecutive years has become a primary method for subsequent trade mark applicants trying to clear prior existing and conflicting rights.
A trade mark owner who receives such a non-use cancellation action can defend its registration by submitting evidence demonstrating effective commercial use of the mark in mainland China within the 3-year period prior to the application date of the non-use cancellation action. Â
Evidence of Use
It is therefore recommended that owners of Chinese registrations that are in commercial use in China keep evidence of use for defensive purposes in case a cancellation action is filed. The types of evidence of use to defend a non-use cancellation action in China include (but not limited to):
- Purchase agreements
- Bills of lading
- Purchase orders
- Packing lists
- Invoices
- Bank receipts
- Customs declarations
- Product manuals
- Photographs of products
- Advertisements
Defensive registrations
Owners of Chinese registrations not in use in China, which have exceeded the 3-year registration period, that would like to maintain protection in China against non-use attacks should consider the filing of back-up applications to the existing registrations. Â
If the new back-up applications are successfully registered, a fresh registration date will be safe from non-use cancellation actions for a further 3 years and the registration of such marks for defensive purposes is a reasonably cost-effective barrier or deterrent to non-use cancellation actions.
Owners of Chinese trade mark registrations could also look at a re-registration program every 3 years to keep its defensive registration portfolio protected against non-use actions.
At Bailey Walsh, we have long-standing relationships with our Chinese associates and if you would like to discuss your existing Chinese registrations, or if you are looking to file new applications in China, please contact one of our qualified attorneys.
