1. General

Article 44(4) of the Chinese Trademark Law provides that a trademark which has not been put into use for three consecutive years shall be liable for cancellation.

As provided by Article 44(4), where any person who uses a registered trademark has committed any of the following acts, the Trademark Office shall order him to rectify the situation within a specified period or even cancel the registered trademark: (1)...(2)¡­(3), and (4) where the use of the registered trademark has ceased for three consecutive years.

As provided by Rule 39 of the Regulations for the Implementation of the Trademark Law, with respect to the act referred to in Article 44(4) of the Trademark Law, any person may apply to the Trademark Office for the cancellation of such registered trademark, and state that relevant circumstances. The Trademark Office shall notify the trademark registrant to, within two months from the date of receipt of the notification, provide evidence of use of the trademark prior to the submission of the application for cancellation, or explain proper reasons for non-use. If, at the expiry of the time limit, no evidence of use is provided or the evidence provided is invalid and there are no proper reasons for non-use, the Trademark Office shall cancel the registered trademark.

The provision was first introduced into legislation as of the first Chinese Trademark Law adopted by the National People's Congress on August 23, 1982, which took effect March 1, 1983.


2. Duration

The duration of the period of time mentioned in the Article is any three consecutive year's period during the validity of registration. In practice, the three consecutive year's period starts from the date preceding the filing date of the request for non-use cancellation to the date going back to three years. There is not a "suspicious" period preceding the filing of the application for non-use cancellation within which commencement or resumption of use shall be disregarded. As long as the use of the mark is proved by the registrant during the period, the registration shall be maintained. The registrant bears the burden of proof, rather than the petitioner of the non-use cancellation.


3. Use

The type of use required for the trade mark to escape non-use cancellation is provided by Rule 3 of the Regulations for the Implementation of the Trademark Law, in that the use of a trademark, as referred to in the Trademark Law and these Regulations, shall include the use of the trademark on goods, packages or containers of the goods or in trading documents, and the use of the trademark in advertising, exhibition or any other business activities.

In China, use of the trade mark with the consent of the proprietor constitutes use, as long as a chain of evidence of use is provided, such as license agreement and invoices, etc... Use of the trade mark in a form slightly different from the form in which it was registered is also regarded as use as long as there is no substantial alteration of the mark or the distinctive part of the mark. Basically, affixing of the trade mark in our jurisdiction solely for export purposes is held as use. Use of the trade mark for products or services similar to those for which it was registered is accepted unless the latter does not cover the former. A trade mark which is used only on the internet is deemed to have been put to use in our jurisdiction in the circumstances that there are evidences such as contracts, invoices, etc. in real life, which form a chain of evidence to show the goods bearing the mark are sold, traded, or advertised. The evidence includes the evidence of use of the registered trademark by the trademark registrant and the evidence of licensing another person by the trademark registrant to use its registered trademark.

4. Proper reasons for non-use

As provided by Rule 39 of the Regulations of Implementation of the Trademark Law, the registrant may explain proper reasons for non-use as proper excuse of non-use, as long as the reasons are justified by evidences, such as force majeure, or legal or governmental policy reasons, etc..


5. Legal or administrative proceedings

Cancellation of a registration for non-use is basically not automatic, and a request for non-use cancellation by any party should be filed with the Trademark Office. The non-use cancellation action arises through administrative proceedings rather than a legal proceeding, which is filed with the Trademark Office rather than a court. However, the administrative decision on the non-use cancellation is subject to judicial review by instituting legal proceedings.

6. Interest to act

In practice, any person may apply to the Trademark Office for the non- use cancellation of a registered trademark, and state the relevant circumstances. The Trademark Office shall notify the trademark registrant to, within two months from the date of receipt of the notification, provide evidence of use of the trademark prior to the submission of the application for non-use cancellation, or explain proper reasons for non-use.

If, at the expiry of the time limit, no evidence of use is provided or the evidence provided is invalid, and there are no proper reasons for non-use, the Trademark Office shall cancel the registered trademark.

7. Burden of proof

In the non-use cancellation proceeding, it is the registrant of the mark that bears the burden of proof of use.

8. Partial cancellation

Non-use cancellation can be limited to certain goods or services as approved under the registration of the mark, as long as the request for non-use cancellation is clearly and definitely made on the certain goods or services.

9. Date of cancellation

For a registered trademark cancelled through non-use cancellation, the Trademark Office shall publish it, and the exclusive right to use the registered trademark shall be terminated from the date on which the Trademark Office makes the decision of cancellation.

10. Infringement action

In a civil case of trademark infringement litigation, if the allegedly infringed trademark is cancelled for lack of use under Article 44(4), the court may not suspend the on-going trial of the pending infringement action before the non-use cancellation against the infringed trademark is decided, since the cancellation takes effect as of the decision on the non-use cancellation. The court may deicide that the case of infringement is justified, but may not order compensation in favour of the registrant of the cancelled mark.


11. Relevant information

If dissatisfied with the Trademark Office's decision on non-use cancellation, a review of non-decision can be filed with the Trademark Review and Adjudication Board ("TRAB"). In practice, in process of review of decision on non-use cancellation before (TRAB), the registrant is still allowed to submit evidences of use, if he files the review of decision on the non-use cancellation before the TRAB within 15 days from receipt of the decision by the Trademark Office.

The TRAB's administrative decision is subject to judicial review by court, i.e. the concerned party can institute legal proceedings before Beijing First Intermediate People's Court. If not satisfied, the concerned party can go further with an appeal before Beijing Higher People's Court for a final judgment.

For filing law suit before the court, if the registrant is a foreigner, notarized and legalized documents, such as Power of Attorney, Certification of Legal Representative and Business License should be submitted within specified period of time.

Currently, it may take about one year and half for the Trademark Office to make a decision on non-use cancellation and about three to four years for the TRAB to make a decision on review of decision on non-use cancellation. The proceedings at the court may take about six months.