BKIP Limited

COPYRIGHT BKIP 2021
How to fully respond to trademark cancellation for non-use? Jan 2021
According to the Section 2 of Article 49 of the Trademark Law, "if a registered trademark has become the general name of the goods approved for use or has not been used for three consecutive years without proper reasons, any entity or individual may file application to the Trademark Office for cancellation of the registered trademark".
Generally speaking, the related person will not arbitrarily file a non-use cancellation application for a trademark that has been registered for three years without reason. The main reasons for the non-use cancellation application are as follows, including:
1. That trademark which has been registered for three years hinders the subsequent applicant's trademark registration;
2. Because of competition relationships, they hope to crack down on the competitors' trademarks and other considerations.
To prove there is actively using of the trademark that has been registered for three years:
1. Time to submit evidence of use
When receiving Notice of Providing Evidence of Use issued by the National Intellectual Property Administration, it is necessary to submit within 2 months from the date of receipt of the official notice the evidence proving that trademark has been used before the application for cancellation was submitted, or explain the legitimate reasons for no using. If the evidence of using was not provided or the evidence are invalid without justifiable reasons, the National Intellectual Property Administration shall cancel the registered trademark.
2. The Subject of providing the evidence of use
According to the Regulations on the Implementation of the Trademark Law, the evidence for trademark using, includes evidence materials proving that the trademark registrant has used the registered trademark or the trademark registrant permits others to use the registered trademark. That is, as long as it proves that the registered trademark is actually used in a true, legal and effective manner. If the evidence of use is provided by the licensee, the license agreement between the parties, the license reference announcement, or the trademark registrant's statement on licensing the licensee to use the registered trademark.
3. Time range for providing evidence of use
In terms of the time frame for submitting the evidence of use, taking the three-year non-use cancellation application date as the time calculator, it is necessary to provide evidence that are three-year prior to the cancellation application date. You may wonder how to calculate it for three years, no worries, there will be a clear description on the official notice of use issued by the government. If the evidence of use after three years is provided only to maintain the symbolic use of the trademark registration, the official generally does not approve it.
4. Provide the geographical scope of the evidence of use
Due to the territorial nature of trademarks, the evidence of use provided must be limited to mainland China.
5. Scope of evidence to submit evidence of use
According to the Trademark Examination and Trial Standards: the use of trademarks refers to the commercial use of trademarks. It includes the use of trademarks on commodities, on the packaging or containers of the commodities, written in the transaction documents, or the use of trademarks in advertising, exhibitions, and other commercial activities to identify the source of the commodities.
In summary, registered trademarks should be maintained case by case based on difference situation. If there is indeed no actual use of the trademark and wish to maintain the registration, the validity of the trademark can be maintained through active subsequent registration.