According to the letter of the Chinese law, the termination of trademark protection rights is possible if certain conditions are met. The key factor in this case is time – the procedure for cancellation of a trademark for non-use can only be initiated after three years from its registration. This procedure is carried out on the basis of a special request, which can be submitted by individuals or companies from all over the world. At Trademark Partners, we assist our clients in the efficient completion of all formalities relating to the termination of rights in a trademark.
Trademark protection in China is granted for 10 years from the date the Chinese Patent
Office issues a final decision on registration. Trademark rights can be expected to
expire at the end of the protection period.
If you wish to extend the protection of a trademark for another ten years, you must file an application before the end of the protection period. According to Chinese regulations, it is necessary to use a professional agent for this purpose. As Trademark Partners, we have a permanent presence in China and can assist our clients in this area and represent them before the Chinese authorities.
Cancellation of trademark rights may also be the result of a decision issued by the Chinese Patent Office. This decision is made at the request of a third party in a situation where the owner of the rights does not prove that he has used his trademark in mainland China during the three years prior to the date of filing the application for cancellation.
Trademark registration is a priority when planning to do business in China. It is important to remember that, under Chinese law, failure to use a trademark may result in the deprivation of the owner’s acquired rights. However, protection is not automatically withdrawn. As mentioned above, the procedure for the lapse of trademark rights is by special application. Anyone can file an application, but only after three years of protection.
Anyone has the right to apply for cancellation of a trademark in China. Most often, people who have been victims of bad faith trademark registration apply for cancellation. It is also common for a person for whom the trademark is an obstacle to registering their own trademark to apply for cancellation of a trademark. In this case, the first step is to terminate the rights to the conflicting mark, and only in the next step can you obtain protection for your mark on the basis of a new application. It is not possible to file an application for cancellation of rights for one trademark together with an application for registration of another trademark. Chinese law clearly regulates this issue and requires two separate applications to be filed with the Trademark Office through a professional attorney.
It should also be added that filing an application for cancellation of trademark rights is not the same as cancelling them. On receiving such a request, the Office will forward it to the person in whose name the mark was registered. This person, who wishes to defend his rights, must provide the Office with credible evidence of the use of the mark in Mainland China within the statutory time limit.
No justification is required to file an application for cancellation. These applications are reviewed by the Chinese Patent Office, which, upon receipt of the trademark cancellation application, notifies the trademark owner of the commenced proceedings. The person who holds the rights to the trademark is obliged to submit to the Office, within the statutory period, credible evidence confirming the use of the trademark in a given class in relation to the goods or services specified in the certificate of protection.
The documents submitted are analysed by a specially appointed committee of the Office. It will then decide whether the submitted evidence is sufficient to conclude that the given trademark has been used during the period of three years prior to the date of filing the application for retrieval of trademark rights. If the current owner of the rights does not provide convincing evidence, the Office will issue a decision to retrieve the trademark.
