The China National Intellectual Property Administration (CNIPA) has made significant changes to the examination rules for non-use cancellation actions against trademark registrations that have not been used for three consecutive years.
Previously, the trademark owner bore the entire burden of proof of use – the applicant was only required to submit a simple explanation of the situation and a few web search screenshots. However, the new requirements have increased the burden of proof on the applicant.
New evidence requirements
According to the updated rules, the applicant must now submit three types of core evidence:
- evidence of the trademark owner’s business registration, including basic information, scope and status, and registration status of the mark;
- evidence of its product sales or services and office premises, where the registrant is active; and
- evidence of online trademark use searches, investigation of the mark on online platforms and industry-specific websites for designated goods, as well as screenshots of five consecutive pages of related searches from the homepage and at least three platform searches.
Update aims to better protect legitimate IP rights
The increased burden of proof on the applicant requires them to provide more stringent evidence of non-use, effectively curbing malicious applications for trademark cancellation. Sometimes, a trademark will receive more than 60 non-use cancellation actions, which seriously interferes with the registrant’s legitimate rights and interests and normal operations.
The updated requirements aim to protect the legitimate rights and interests of registrants and reminds them to pay attention to actual use of their marks, actively collect and organise evidence of use and respond to reasonable applications for non-use cancellation.
Further, the updated rules should reduce the number of arbitrary or malicious actions, thereby improving examination efficiency and saving limited administrative resources.
Navigating the new rules
Applicants must show higher levels of professionalism, prepare for increased costs and spend more time on evidence collection, analysis and organisation. Therefore, they should entrust more professional agents to handle these applications. Agents not only need to help collect evidence that meets the requirements, but also ensure integrity and validity to increase chances of success.
The new requirements reduce arbitrary and malicious interference, which allows trademark registrants to focus on building their brand. However, they must still be cautious, and promote and use their marks on online platforms to make it more difficult for others to prove non-use. Further, registrants must continue to establish and maintain trademark use records, regularly check how their marks are being used and communicate with IP professionals to understand the new rules and avoid non-use cancellation attacks.
Key takeaways
The new requirements aim to effectively promote the fairness and transparency of the trademark system and curb malicious application chaos. Both non-use cancellation applicants and trademark owners must pay close attention to this change, and make timely adjustments to the management of their trademark registrations and use strategies.
