China Trademarks: The First Thing To Do When Someone Already Has “Yours”

It used to be rare for one of our clients to be unable to secure a desired trademark in China because someone had beaten them to it. With the proliferation of trademark filings in China over the last 3-5 years, those halcyon days are over. Nowadays it seems that at least  10% of the China trademarks we seek to secure for our clients have already been taken by someone else.

When that happens, the first thing we suggest that our client determine whether the previously registered trademark may have been abandoned. Under Chinese trademark law, failing to use a China trademark in commerce at least once every three years puts the trademark at risk of cancellation. I use the word “at risk” here because in China a trademark is presumptively valid through its term unless someone files a non-use cancellation against it. Our China lawyers have been filing a lot of non-use cancellations lately.

But before we file a non-use cancellation, we gather up our own evidence regarding non-use, usually using Baidu for the initial search. If something shows up on Baidu from the last three years indicating that the trademark has in fact been used in commerce, our work is usually done and securing a non-use cancellation will likely not be possible. If we do not find anything on Baidu, we keep escalating our trademark use search until we either find something showing trademark usage within the last three years or until we become convinced that filing a non-use cancellation is the way to go.

Filing a non-use cancellation in China is relatively fast and easy. Most of the time, non-use cancellations involving a trademark that has not been used for at least three years receives no response and the “offending” trademark is cancelled.