Three-year non-use trademark cancellation: a guide to maintain your rights
date: 2021-02-24 Alexandra Chopenko Read by:

    Three years following a successful trademark registration, if a third party files an application for "Three year non-use registration cancellation", the trademark rights holder will receive the "Notice on Providing Evidence of the Use of Registered Trademarks" issued by the State Intellectual Property Office, requesting that the rights owner must provide evidence of use within the prescribed time limit. At this time, the trademark owner may have a lot of questions and concerns: What does it mean for a mark to be cancelled for non-use? Why provide evidence to prove the use of your registered trademark? What are the consequences of not providing evidence? What kind of evidence should be provided? This article seeks to answer these questions.

    What is a trademark non-use cancellation application?

    To encourage trademark registrants to use their trademarks and avoid idleness and waste of resources, the second paragraph of Article 49 of the Trademark Law stipulates that "Where a registered trademark has become the generic name of the designated goods or stays unused for three consecutive years, any unit or individual may apply to the Trademark Office for revoking the same, which shall make decision within nine months upon receipt of such application. In case of prolonging such period for certain special situations, it may be prolonged for three months after the approval of the administrative department for industry and commerce under the State Council.”

    That is to say, any business or individual can apply to the State Intellectual Property Office for the cancellation of any registered trademark that has been registered for three years, claiming that the registered trademark has not been used in the past three years, that is, the "trademark cancellation" application mentioned in the article.

    The State Intellectual Property Office will issue the "Notice on Providing Evidence of the Use of a Registered Trademark" to the trademark owner after receiving the "Application for Three-Year Non-Use Trademark Cancellation". Within two months of receiving the notice, the trademark owner must provide evidence of the use of the registered trademark on the goods approved for use or justified reasons for not using it.

    What are the consequences of failing to provide evidence of use in allotted time and what remedial measures will be available?

    According to Article 49 of the Trademark Law and Articles 66 and 67 of the Regulations for the Implementation of the Trademark Law, if no evidence of use is provided at the expiration of the time limit, or the provided evidence is invalid and there is no legitimate reason, the State Intellectual Property Office will revoke the registration of the trademark on the approved goods in the relevant category in accordance with the law.

    After receiving the "Decision on Revocation Application of Non-Use for Three Consecutive Years" issued by the State Intellectual Property Office, the trademark owner may apply to the State Intellectual Property Office for reexamination within 15 days from the date of receipt of the decision and submit relevant evidence and materials during the review process.

    If the trademark registrant fails to submit the evidence of use within the prescribed time limit, the cancellation review is the only remedial measure. If the deadline for submitting the cancellation review is missed, the trademark registrant will eventually lose the right to the registered trademark.

    What evidence should be collected and submitted to prove the use of a registered trademark?

    First, according to the "Trademark Examination and Trial Standards", evidence materials must meet the following requirements:

    1) Able to display the logo of the trademark;

    2) Able to show that the trademark is used on designated goods/services;

    3) The user who can display the trademark (including the registrant and the licensee);

    4) Able to display the date of use of the trademark;

    5) It can show that the trademark is used within the scope of the validity of the Trademark Law;

    The specific forms of trademark use include the use of transaction documents related to goods or services, including sales contracts, service agreements and corresponding invoices, inspection reports, import and export customs declarations, etc.

    However, according to actual business practices, in general, a single piece of material cannot reflect all of the above elements. Therefore, when collecting evidence, the most important thing is to pay attention to the integrity of the evidence chain, which means that although a single piece of evidence cannot meet all the evidence requirements , it can form a complete chain of evidence with other materials to prove the use of the trademark. For example, product pictures, product manuals, related invoices and contracts provided in the sales link can form a complete and effective chain of evidence to prove the use of trademarks.

    How can trademark owners reduce the risk of trademark cancellation?

    First, the risk of withdrawal of the proposed trademark is unavoidable, because any person or organization can apply for the cancellation of its registration application for a trademark that has been registered for three years and has not been used for three consecutive years without justifiable reasons.

    However, the trademark owner can reduce the risk of the trademark being cancelled based on the three year non-use application to a certain extent:

    ·        First, when trademark owners use trademarks, they should pay attention to the timely establishment of trademark use evidence archives and save multiple aspects of use evidence to protect the use and registration of their own trademarks.

    ·        If the registered trademark is permitted to be used by others (ie licensed), it is recommended to file the trademark license use with the State Intellectual Property Office as soon as possible. This kind of filing can at least remind others that the registered trademark is being used in the form of permission, which can reduce the probability of being cancelled based on non-use to a certain extent.

    ·        Regarding some defensive trademarks, which are mainly used to expand the protection of the trademark owner’s own brand, but not actually used on the relevant approved goods, the trademark owner may choose to re-register the defensive trademark when the trademark registration is about to reach three years.

    Most companies or right holders will have dozens or even hundreds or thousands of trademarks. Real-time follow-up of these trademarks and monitoring of similar and infringing trademarks requires energy and resources. For a professional handling of your trademark resources, we recommend Kangxin IP Platform – a one-stop solution for all trademark services, from search to renewals and monitoring, an automated service that simplifies your trademark management needs, all backed by our professional trademark attorneys.