The registration of a trademark in China becomes every year more and more difficult. It doesn't sound like a news considering that in the last few years the number of trademark filings has passed the 9 million application per year.
The registry is exploding, and this makes the life complicated for new applicants which are seeking for IP protection.
What tools then do we have to "increase" our chances of success when filing a new trademark application? What to do against prior trademarks which would be considered (or have been already cited) by the examiner as prior registrations and thus obstacle to the new application?
For sure the Non-Use cancellation is one of the most common tools in this situation.
Indeed, this action does not require an active behavior from the applicant (of the NUC) which can be translated in an action easy-to-be-filed and which does not require special attentions from its applicant. It is rather the opposite where the burden is all on the trademark owner.
Once a non-use cancellation has been filed against an existing trademark, the trademark owner has a very tight period of time to reply to this action. The TM owner has 2 months period from the date of receiving the notification that a NUC has been filed against one (or more) of his trademarks.
Does this period represent a mandatory deadline?
Absolutely yes. If the evidence of use are provided to the examiner one day after the deadline has expired, the trademark will automatically be cancelled by the registry without further notice.
This mean that if you receive a notice about a NUC against one of your trademarks, you should act as soon as possible to reply within the terms to such notice.
What kind of evidence are needed?
Can be filed a NUC against one of my trademarks even though I just registered it and not used it yet? Well, let's check it out.
Evidence needed? Any evidence that can prove that your trademark has been used during the three years prior to the date of receipt of the notice of the NUC. You have now 2 months (and no one day more) to reply to this NUC.
The evidence shall include but not be limited to:
(1) Visible trademark on the goods, goods packages, containers, labels, etc. by means of direct sticking, engraving, printing or weaving, etc., or using the trademark in attached labels of goods, product specifications, instruction manual, price list, etc.;
(2) Using the trademark in the transaction documents related to the sale of goods, including using the trademark in goods sales contract, invoices, bills, receipts, goods import and export inspection and quarantine certificate, customs declaration documents, etc.;
(3) Using the trademark through the media such as broadcasting, TV, etc., or publishing the trademark in public publications, advertising and propagandizing the trademark or the goods designated by the trademark by means of billboard, posting advertisement or other advertising means; and
(4) Using the trademark at exhibitions and expos, including providing the printing materials and other information using such trademark at exhibitions and expos.
Important: all the evidence submitted to CNIPA should be better filed in original or as notarized copy (which means that the period to collect the evidence and proceed with the formalities is very tight).
When can be filed a NUC?
The answer to this question is provided directly by the Trademark Law. A NUC can be filed against a registered trademark no earlier than three years before its registration. This means that if your trademark has been granted less than three years ago, it cannot be subjected to a Non-Use cancellation action.
As you may see from what above the NUC action is something to be always careful about.
The two months provided by the law to reply to this action are sometimes very tight and if there is no clear order in collecting these evidence during the whole life of a trademark, it could be a tough job to rush to collect the relevant material (and proceed to its formalities) within the deadline.
Our suggestion is to provide on a timely basis evidence of usage to your trademark agent and have them ready-to-be-filed if needed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.