In the dynamic landscape of business and intellectual property, enterprises often encounter trademarks that have been registered for more than five years but may pose obstacles to their own branding or market expansion. The Chinese Trademark Law provides structured and actionable measures to address such situations. Depending on the specific circumstances, companies may pursue either a Non-Use Cancellation or an Invalidation Action. This article provides a detailed guide to these options, with particular emphasis on invalidation action based on both well-known trademark status and malicious registration.

1.  Non-Use Cancellation Action

Legal Basis:

Article 49(2) of the Trademark Law stipulates that if a registered trademark has not been used for three consecutive years on the approved goods or services without justifiable reason, any entity or individual may apply to the China National Intellectual Property Administration (CNIPA) for its cancellation.

Interpretation:

If a trademark has been registered more than three years but no evidence of commercial use on the approved goods or services within the valid period is found through investigation, any entity or individual may file an application with the CNIPA to cancel the registered trademark based on the ground of non-use for three consecutive years. This route is particularly effective against “sleeping trademarks” that are held but not actively utilized, freeing up the mark for legitimate use by others.

The applicant bears the initial burden to demonstrate that the trademark has not been used in commerce during the relevant three-year period. This can often be supported by online investigations and search reports.  After the initial filing, the burden of proof shifted to the registrant, the registrant needs to submit evidence to prove the use of the trademark in the past three years or provide a justified reason for non-use. If neither of them can be provided, the registered trademark will be cancelled.

2.  Invalidation Action Against Long-Standing Registrations

For trademarks that have been registered for over five years, non-use cancellation may not always be feasible—especially if there has been sporadic or minimal use. In such cases, an invalidation action becomes a powerful alternative, particularly when the registration involves well-known trademarks or malicious intent.

A. Invalidation Based on Protection of Well-Known Trademarks

Legal Basis:

Article 45(1) of the Trademark Law stipulates that where a registered trademark violates paragraph 2 or 3 of Article 13, Article 15, paragraph 1 of Article 16, Article 30, Article 31, or Article 32 of this Law, a prior rights holder or an interested party may petition the Trademark Review and Adjudication Board for declaration of invalidation of the registered trademark within five years from the date of trademark registration. If the registration is acquired in bad faith, a well-known trademark holder shall not be subject to the five-year time limit.

Interpretation:

This exception to the standard five-year time limit plays a vital role in safeguarding iconic and long-established brands from being copied or unfairly registered by others at a later date. It ensures that the goodwill and reputation accumulated by well-known trademarks are not exploited without authorization, thereby maintaining fairness in the market and protecting the value of legitimate brand assets.

If a party intends to succeed in an invalidation action based on the protection of a well-known trademark, two key conditions must be satisfied. First, it must be proven that the claimant’s trademark had already attained well-known status amongst the relevant public in China before the filing date of the disputed trademark. Second, evidence must establish that the registrant acted in bad faith.

B. Invalidation Based on Absolute Grounds & Malicious Registration

Legal Basis:

Article 44(1) of the Trademark Law stipulates that where a registered trademark violates Article 4, Article 10, Article 11, Article 12, or paragraph 4 of Article 19 of this Law, or its registration was acquired by fraud or any other illicit means, the Trademark Office shall declare invalidation of the registered trademark; and any other organization or individual may petition the Trademark Review and Adjudication Board to declare invalidation of the registered trademark.

Interpretation:

This clause stipulates the circumstances under which a registered trademark that violates the absolute grounds for refusal is not subject to the five-year registration limitation. Such circumstances include registrations made with malicious intent to hoard trademarks without genuine use intent, registrations obtained through deceptive or other improper means, trademarks that have adverse effects, or those lacking distinctive character, etc.. If the registered trademark violates the aforementioned provisions, an applicant may file an invalidation application against a trademark registered for over five years solely based on the absolute grounds for refusal.

Actions under Article 44(1) are not subject to the five-year time limit, making it a viable path against older registrations that were improperly granted.

Conclusion

Trademarks registered for over five years are not immune to challenge. Enterprises have clear legal avenues under Chinese trademark law to address such registrations—whether through Non-Use Cancellation for non-used marks, or Invalidation Actions based on well-known trademark protection or malicious registration. A well-prepared strategy, backed by solid evidence and professional guidance, can effectively protect your brand’s integrity and market position.