New Standards for Non-Use China Trademark Cancellations
Foreign brand owners have long relied on non-use cancellations (NUCs) as a powerful tool to clear the path for trademark registration in China, particularly in instances where an unrelated party had previously registered the mark in question in bad faith. Under Article 49(2) of China's Trademark Law, any party may petition to cancel a registered mark that has not been used for three consecutive years without justifiable reason. This system—commonly known as 撤三 (chè sān)—was once considered relatively accessible, but recent developments point to a significant tightening of standards.
Greater Substantive Scrutiny on China Trademark Cancellations
Historically, once a NUC petition was filed, the China National Intellectual Property Administration (CNIPA) would notify the registrant, who then bore the burden of proof to demonstrate use of the mark or justify its non-use. Failure to do so typically led to cancellation.
However, CNIPA is now signaling a shift away from this approach, with the petitioner increasingly expected to provide affirmative evidence or reasoning that no genuine use of the mark has occurred. This evidence can include failed searches of online platforms or in-person market investigations. This evolution reflects a growing desire to crack down on frivolous filings and uphold the integrity of the cancellation system—though in practice it may provide a helping hand to bad-faith trademark registrants, including those with no desire to proactively defend their ill-gotten registration before CNIPA.
This said, the bar for registrants has also been raised. Symbolic use, nominal use, and use merely for the sake of maintaining registration are no longer sufficient. Evidence must show real, continuous, and public commercial use, as outlined in both CNIPA guidelines and decisions from courts like the Beijing IP Court. As noted in the official CNIPA training materials, there must be "商业领域中的实际使用"—genuine use in the commercial marketplace that serves the trademark's function of identifying source.
My law firm has seen firsthand the effectiveness of the traditional non-use cancellation process in China. In numerous cases where we sought to clear the path for our clients' trademarks, our pre-filing due diligence often revealed a lack of genuine commercial use by the registered party. This insight allowed us to strategically pursue NUC actions, and we achieved an extremely high rate of success, often because the challenged party, aware of their inability to demonstrate use, would not even contest the petition. However, the evolving landscape in China, with its increased emphasis on the petitioner's burden of proof, suggests that these relatively fast, straightforward and inexpensive victories may become less common. Thorough upfront investigation will remain crucial, but the process itself is likely to become more demanding, even in seemingly clear-cut cases of non-use.
Key Takeaways Regarding China's New Trademark Cancellation Standards
1. The Stakes Are Higher for Initial China Trademark Registration
With NUCs becoming harder to win, the cost of failing to secure your mark early in China has gone up—a lot. If your application is blocked by a prior registration, cancelling that registration will now require more time, effort, and often expense. While NUCs will continue to be an option for brand owners wrongfully deprived of trademark registration in China, it will be a more demanding, more fraught pathway.
This shift towards requiring more upfront evidence in NUC petitions could pose significant challenges for foreign SMEs. Unlike larger corporations, they often have more constrained resources, making extensive online and physical investigations in China a costly and logistically complex undertaking. This increased burden might inadvertently make it harder for them to challenge bad-faith registrations, potentially hindering their China market entry despite having legitimate trademark rights.
2. China Trademark Cancellation Petitioners Must Do More Legwork
The new expectation is that NUC applicants must take proactive steps to show the mark they are challenging is not in use. This may include:
- Online searches on major e-commerce platforms such as Taobao and JD.com.
- Physical investigations in retail locations.
- Examination of whether the registrant has a valid business license and if its activities are in line with scope authorized by the business registration authorities in China.
In short, the process is moving from a paper formality to a more substantive fact-finding mission, arguably more in line with practice in countries like the United States.
3. China Trademark Registrants Must Be Ready to Prove Real Use
On the defense side, registrants must maintain detailed, credible records of trademark use—ideally a well-organized file with yearly submissions of:
- Product packaging and invoices.
- Marketing materials.
- Sales contracts.
- Screenshots of listings or media advertisements.
All of these should be clearly dated and show use within Mainland China. It is also essential to ensure the mark appears on the goods/services it was registered for. Furthermore, the mark must appear it its registered form, a potential challenge for brands that decide to rebrand partway through the validity period for their registration.
Final Thoughts on China's New Trademark Cancellation Standards
As NUCs shift from being a go-to strategy to a higher-stakes endeavor, both trademark applicants and registrants must recalibrate their approach. For brands doing business in China, the message is clear: register early, use your mark meaningfully, and document everything.
China Trademarks and Non-Use Cancellations: The Stakes Just Got Higher
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