A message we always convey to our clients is to remember – before you commence any business in China – you need to have your trade marks protected there. This is because the overarching trade mark rule that prevails there is ´first to file´ and unlike in Australia, it is not possible to use the common law defence of ´prior use´ if someone else registers your trade mark first.
Recently, however, we have found ourselves regularly communicating another message to our clients in relation to their Chinese trade mark registrations – use your trade mark as registered for the claimed goods or services otherwise it may be vulnerable to removal. This is because we have noticed a sharp increase of either full or partial cancellation actions for non-use filed against clients’ Chinese trade mark registrations.
Use it or lose it
In China, any trade mark that has been registered for more than 3 years after the registration date is vulnerable to a non-use cancellation. If a non-use cancellation action is filed, the owner of the registration will be required to submit evidence of use of the trade mark in China for all the relevant goods and services during the past three successive years. Non-use cancellation actions are generally filed by entities who have filed a trade mark application for a similar mark and where the clients’ earlier registration has been raised as an objection during the examination process. As a result, non-use cancellation actions are filed in an attempt to remove the earlier obstacle and clear the pathway for registration.
The increase of cancellation actions will continue to grow in correlation with the continuing growth of trade mark applications filed in China every year. Therefore, a fundamental part of any business strategy in China must be ‘risk minimalisation’ and it is therefore imperative that active steps are taken to maintain trade mark registrations in China.
Some ways to protect and maintain trade mark rights in China are:
- Ensure that the registered trade mark is used continuously in China. If use ceases for any reason and goes on for a continuous period of 3 years, that would then make the trade mark vulnerable to cancellation on the basis of non-use
- The version in use should match the registered version in the China database
- Ensure all new variations and logos relating to the mark are protected in China to bolster and maintain protection for all the variations of the trade mark in use
- Ensure that the registered trade mark is used for all key goods and/or services claimed in the registration
- If there are any key goods or services in respect of which the trade mark has not been used for a 3 year period or more, then consider the filing of fresh applications. This may be advisable as the new applications would not be vulnerable to non-use cancellation actions and could provide back-up protection in the event the existing registrations are attacked.
In an ideal world, it would be nice if these additional burdens were not imposed in order to maintain trade mark protection in China. However, in the real world, extra steps need to be considered and taken to avoid Chinese trade mark registrations being removed in full or partially removed resulting in either a full or partial loss of trade mark protection.
Overall, the message is to ensure a risk minimisation strategy is in place and implemented to avoid the risk of losing valuable trade mark rights.