Recently, there has been an increasing need to cancel trademarks that are perceived as abandoned or inactive, given that the registrations often prevent a later application from registration. However, recent developments have introduced new requirements for initiating non-use cancellation.

Current requirement and burden of proof

Under current laws and regulations, the petition of trademark cancellation is subject to a trademark that has entered into the registry for more than three years. Any third party who believes that the trademark has not been used in commerce for three consecutive years can petition for a cancellation. The petitioner should submit a written application in due form that includes the trademark details, the identification document of the petitioner, and the power of attorney (POA) if an agency is authorized to act on their behalf. Furthermore, the petitioner should provide prima facie evidence demonstrating the cessation of use of the trademark in connection with designated goods/services during the last three years.   

In practice, online search results on mainstream search engines, shopping platforms, or other resources can establish prima facie evidence of non-use by the registrant. Through the formality check, CNIPA will review the documents and examine if all materials are submitted in proper form. In most cases where there are no significant issues with the petition, the cancellation request can be accepted and proceed to the next stage, and the registrant will be asked to provide proof of trademark use. However, a Rectification Notice (Notice’) of trademark cancellation matter has raised concern and discussion.

Update and sign of new requirements

In the spread Notice, CNIPA held that the cancellation petitioner failed to establish a prima facie case based on the evidence provided, and should supplement the submission with additional information and evidence. The Notice specified the following:

1. Details of the registrant of the challenged trademark, including its business scope, legal entity status, and trademark registration history.

2. Investigation reports of the registrant in terms of its goods or services, business address, and relevant supporting evidence.

3. Five consecutive pages of search results from comprehensive online platforms or industry-specific platforms regarding the designated goods or services of the trademark, and such platforms should be no less than 3.

The above requirements in the Notice are more demanding than most of the typical circumstances of cancellation cases, however, the shift in practice did not come out for nothing. Discussion among the industry revealed that a trademark had been put in place of non-use challenge over 60 times by different petitioners, possibly with internal connections. The repetitive cancellations tremendously wasted administration resources, disturbed the trademark registration and management order, and most importantly, badgered and harassed the legitimate trademark holder.

Trademark bad-faith filings now seem to have extended to cancellation procedures. Some malicious petitioners intentionally file cancellation requests against registrations that are obviously in use, providing weak evidence of non-use and trying to get around the demerit. In other words, CNIPA’s action requiring additional evidence is fair and well-founded.

What do we learn under new circumstances?

A legitimate cancellation petitioner typically aims to remove obstacles to their own trademark application rather than disrupt the status of a trademark that is clearly in use. So, CNIPA’s new practice is understandable for those with genuine intentions to clear up inactive trademark registrations.

Under the new circumstances, it’s foreseeable that CNIPA will raise the bar of accepting a cancellation request. As a result, the initial filing of a cancellation petition is becoming more stringent and crucial for petitioners, especially those who also hold a pending application that conflicts with the challenged trademark and are desperate for a favorable cancellation decision so that the pending trademark can be granted. Unnecessary discrepancy or failure to meet the standard of acceptance will prolong the procedure and count against the associated application for the petitioner.

Therefore, it's essential to consult a professional trademark attorney when dealing with non-use cancellation cases. A professional can thoroughly assess the market and the use status of the contested trademark, uncover evidence of non-use, and help ensure the case is properly accepted by the trademark office. Seeking legal guidance in such matters significantly increases the chances of a successful outcome.