Recently, some applicants and agencies have begun receiving the Notice of Deficiency for a Three-Year Non-Use Cancellation from the China National Intellectual Property Administration (CNIPA). These notices include some relatively uncommon requirements for supplementary evidence.
Notice of Deficiency for a Three-Year Non-Use Cancellation
“According to the CNIPA’s review, applicants must provide preliminary investigative evidence regarding the fact that the trademark subject to cancellation has not been used for three consecutive years. The required evidence primarily includes the following:”
- Basic information about the registrant of the trademark subject to cancellation, including its scope of business, operational or corporate status, trademark registration status, etc.
- If the registrant is in operation or still in existence, the applicant must provide investigative reports and evidence of the registrant’s sales of goods or provision of services, business or office locations, etc.
- Investigative evidence from comprehensive online platforms or industry-specific websites related to the goods/services covered by the registered trademark. The search evidence should include full-page screenshots from the first five pages starting from the homepage of the search results, and the number of platforms searched should be no fewer than three.
Additionally, a few deficiency notices have raised requirements about how keywords are set in online searches. If inappropriate keywords are used, resulting in inaccurate search results, applicants may be required to resubmit evidence with more appropriate keywords.
Regarding the documents that applicants must submit in the cancellation procedure, the CNIPA’s Application Guidelines specify the following:
- According to the Trademark Law Implementation Regulations, applicants should explain the circumstances of the non-use of the trademark and provide preliminary investigation evidence, such as network search results, market research reports, etc. (https://sbj.cnipa.gov.cn/sbj/sbsq/sqzn/202303/t20230330_26201.html).
Article 66 of the Trademark Law Implementation Regulations stipulates that if a registered trademark has not been used for three consecutive years without justifiable reasons as outlined in Article 49 of the Trademark Law, any organization or individual may apply to the CNIPA for its cancellation and must provide relevant circumstances when filing the application.
Therefore, the requirements outlined in the Notice of Deficiency for a Three-Year Non-Use Cancellation Application are legally grounded.
However, this practice is a significant departure from previous standards. In the past, the CNIPA’s review of “preliminary investigation evidence” was relatively lenient. Applicants were typically required to submit a “simple investigation report” along with a few pages of network search results related to the cancelled trademark, its registrant, and the relevant goods/services. This was often considered sufficient to meet the initial evidence requirement. Afterward, the trademark registrant would need to submit evidence of use; otherwise, the trademark would be cancelled. In other words, even if the trademark was clearly in continuous use, a cancellation application could trigger the obligation for the registrant to submit use evidence. In a news release in October 2022, the CNIPA reported that one trademark had been subjected to cancellation over 60 times, imposing an unreasonable burden on the trademark registrant. The CNIPA’s latest actions are likely aimed at curbing the improper use of the cancellation procedure.
In comparison, the requirements in the recent deficiency notices are much stricter than before. Preparing materials according to these new standards will clearly incur significantly higher costs. What many people are most concerned about is whether the CNIPA will apply this strict standard to all cancellation cases. As of today, the CNIPA has not issued any official notification on this matter.
We have discussed this issue with many other IP firms and found that, to date, the vast majority of cancellation cases have not applied such strict standards. The deficiency notices we have received so far are mostly in cases where the cancellation applicant is an individual from China or where the trademark in question is clearly still in use. Therefore, in light of the CNIPA’s new practices, we recommend taking a “wait-and-see” approach for now. This is mainly because such deficiency notices are still relatively rare, and the increased costs of preparing materials under the stricter standards are significant. Furthermore, even if the CNIPA deems the preliminary investigation evidence inadequate, we generally have an opportunity to submit more detailed evidence during the Office Action phase.
We would also like to highlight two points:
1. Caution with “Anonymous” Cancellation Applications
Since July 2024, the CNIPA has issued a large number of deficiency notices in cancellation cases, requiring applicants who have filed numerous cancellation applications to explain their potential intentions to profit from the procedure. This is part of the CNIPA's efforts to combat “anonymous” cancellation applications. The recent deficiency notices we have received, requiring detailed investigative evidence, mostly pertain to cases where the cancellation applicant is an individual from China. As a result, filing an “anonymous” cancellation application is likely to become increasingly difficult. We recommend using a real name whenever possible in cancellation applications.
2. Cancellation Applications for Trademarks Clearly in Use May Be Rejected
During the formality examination stage of the cancellation procedure, the examiner may proactively search for evidence of trademark use. If the trademark is found to be clearly in continuous use, the CNIPA will issue a deficiency notice requiring the cancellation applicant to submit more detailed “preliminary investigation evidence.” If the cancellation applicant fails to provide the required evidence, or if the CNIPA finds that the evidence is inconsistent with the facts, the cancellation application may be rejected.
We will continue to monitor the CNIPA’s new practices in cancellation cases and look forward to the official release of the “Implementation Guidelines” to better guide our practice. We will keep you updated in this regard.
