“To make cancellations more productive, multiple requests could be raised simultaneously or consecutively,” she continued. “As a result, trademark registrants had to collect and submit use evidence repeatedly to maintain their trademark registration. Some people even developed the practice of filing and withdrawing non-use cancellation requests into a business model, which the trademark office termed bad-faith non-use cancellations.”
She added: “To balance the burden borne by both parties, reinforce the stability of registered trademarks and deter abusive cancellation practices, the rules were changed. These changes are favourable to trademark registrants and will, of course, significantly increase the difficulty for later trademark applicants in utilizing non-use cancellation as a strategy. However, in the long run, whether the new rules represent a better application of relevant legal provisions and achieve a more balanced allocation of rights and obligations among all parties remains to be seen.”
From the perspective of trademark protection under Chinese law, Li said, the effective use of trademarks will receive increasing attention.
“China has always adhered to the first-to-file principle,” she noted. “However, with the development of various trademark issues – such as bad-faith preemptive registrations of others’ trademarks and the substantial volume of zombie trademarks – actual use has become a critical factor in resolving disputes and conflicts.”
This trend is reflected in multiple provisions of the new draft amendments to the Trademark Law and the increasingly stringent examination standards for non-use cancellation requests in recent years.
“Consequently, for enterprises, strategically planning their trademark portfolio in China remains imperative, as it forms the foundation for securing effective protection,” she said. “Simultaneously, emphasizing genuine use and maintaining robust evidence of such use is of critical importance, as it ensures the stability of their trademark rights.”
- Excel V. Dyquiangco
