In the latest post from the MARQUES China Team, William Lobelson discusses revocation of a trade mark for non-use in China.

A registered trade mark that has not been used for a period of three years from registration is liable to cancellation in China (Article 49.2 of the Chinese Trademark Law).

Anyone is entitled to seek revocation. This is usually the most efficient way of overcoming a refusal directed against a trade mark application which is based on an earlier mark.

CTMO procedure

The procedure is conducted in the China Trade Mark Office (CTMO). The trade mark owner (respondent) is given a (short!) term of two months to file evidence of use. Use of the mark must be proven over the three-year period preceding the petition for revocation.

Evidence of use that is deemed relevant includes licence agreements, commercial literature, advertising publications, invoices, catalogues and web pages. Use by a licensee is accepted. The documents must reflect use of the mark in China, as registered, for the relevant classes of goods/services.

Original documents or notarised copies are recommended (to make them incontestable).

In the absence of any evidence of use, the mark is cancelled.

If evidence of use is filed, the CTMO proceeds to examination and gives a decision. The evidence of use is not communicated to the applicant. At this stage therefore, the applicant cannot verify the relevance and authenticity of the evidence of use.

The procedure timeframe is between six and eight months.

Appeal

The decision can be appealed to the Trademark Review and Adjudication Board (TRAB) within 15 days.

If the request for cancellation is denied, and the applicant files for appeal, the evidence of use filed by the respondent will be communicated so it may be contested.

Both parties can file arguments and new evidence in the TRAB.

The procedure timeframe in the TRAB is between 12 and 18 months.

The decision of the TRAB may be appealed in the Beijing IP Court within 30 days.

Note that, in theory, when non-use can be justified (force majeure, restrictions imposed by government policies, bankruptcy/liquidation or other reasons for which the trademark owner is not responsible), the trade mark may be maintained. This in, in practice, very rare.

William Lobelson is a partner at Germain & Maureau in France and a member of the MARQUES China Team.