Pre-application trademark searches and post-application notices from the China Trademark Office (CTMO) are increasingly revealing conflicts with existing trademark registrations and pending trademark applications. Given the vast number of trademarks being filed in China, this comes as no surprise.
But a cited conflict, whether in a search or from the CTMO examiner, isn’t necessarily the end of the road for a trademark application. Chinese trademark law and practice offer a potential solution: the non-use cancellation. In China, any trademark that has been registered for more than 3 years is vulnerable to a non-use cancellation as of 3 years after the registration date.
In almost every country, trademarks that aren’t used in commerce for a given period of time (usually about 3 years) are deemed abandoned and may be cancelled. In the United States, when a registered trademark is cited as a conflict, the odds are fairly high that the trademark is still in use, especially if the mark has been registered for 10 years or less. This is because the U.S. requires trademarks owner to provide sworn proof of use at the time of their trademark registration, again between 5 and 6 years after registration, and again between 9 and 10 years after registration. That does not leave a large window of time for a mark to be abandoned.
China has no affirmative use requirements to register, maintain, or renew a mark, and many trademark applicants take advantage of this loophole to register in additional subclasses and thereby cover a wider range of goods. See China Trademarks: Register in More Classes, Take Down More Counterfeit Goods. Under the law in force through December 31, 2026, a China trademark registration generally will not be cancelled for non-use unless a third party files a non-use cancellation. Beginning January 1, 2027, the revised Trademark Law also gives CNIPA express authority to initiate cancellation of a trademark that has gone unused for three consecutive years without justification. See China Trademarks: When (and How) to Prove Use of a Mark in Commerce. Accordingly, the vast majority of Chinese trademark registrations that have been effectively abandoned are nonetheless still valid.
Determining whether to file a non-use cancellation depends on whether a conflicting trademark is actually being used in commerce. With few exceptions, any product or service deemed valuable enough to protect with a trademark registration will be marketed and sold online, and a thorough Internet search will reveal the traces. And I do mean thorough: for starters, going several pages deep on search engine pages (Baidu, Bing, etc.); checking company registrations; scouring social media pages (Weibo, WeChat, etc.); and poring through e-commerce sites (Alibaba, JD.com, etc.). If you find something credible, stop – one documented use in commerce is sufficient to defend a trademark against a non-use cancellation. But much of the time, our searches reveal no evidence that the trademark was ever used.
When you file a non-use cancellation, you indicate whether you wish to cancel the entire registration, or just the registration in certain subclasses. If your goal is to eliminate an obstacle to your own trademark, a partial non-use cancellation with respect to the subclass that matters to you will likely be sufficient and more likely to succeed. If you attempt to cancel an entire trademark registration, the trademark owner only needs to demonstrate use on a single item to defeat the non-use cancellation. Why overreach when it doesn’t gain you anything?
After you have done the research and decided to file a non-use cancellation, CNIPA generally must issue its decision within nine months of receiving the application, although that period can be extended by three months in special circumstances.
A non-use cancellation does not automatically stop CNIPA from examining a new trademark application. Your application can still be examined—and rejected based on the cited mark—before the cancellation proceeding is finished. The important change came in 2023, when CNIPA adopted rules allowing certain trademark review proceedings to be suspended while the status of a cited trademark is being resolved. This is particularly useful after an application has been rejected because of an earlier trademark that you are challenging through non-use cancellation, invalidation, opposition, or another proceeding. If the outcome of the refusal review depends on what happens to that cited trademark, the applicant can request that CNIPA suspend the refusal review while the other proceeding runs its course.
But suspension is not automatic in every case. CNIPA applies a necessity test: the unresolved status of the cited trademark must materially affect the outcome of the review. If another independent ground for refusal, or another unaffected cited trademark, is enough to defeat the application, CNIPA need not suspend the case.
Timing is also important. In a refusal review, the applicant should identify the proceeding against the cited trademark and request suspension no later than the three-month period for submitting supplemental materials after filing the refusal-review request. The suspension request should identify the cited trademark, explain the pending proceeding, and show how the applicant is attempting to remove that trademark as an obstacle. Once the cited trademark’s status has been resolved, the applicant should promptly submit the result and ask CNIPA to resume the review. This makes the strategy more manageable than it used to be, but it does not eliminate the need to coordinate the cancellation with your own trademark application. Depending on the facts, it can still make sense to file a new application while pursuing the cancellation, particularly where other cited marks or timing risks remain. The point is no longer simply to “play the odds” on which proceeding finishes first. The better approach is to plan the cancellation, application, and any refusal review together from the outset.
Filing a non-use cancellation against a trademark squatter has some unique challenges. Many trademark squatters never use the mark in commerce: their sole goal is to monetize the trademark by selling it to the “real” trademark owner, or to the highest bidder on the secondary market.
A trademark squatter could take a couple actions to foreclose the possibility of a non-use cancellation. First, they might sell a few branded goods via e-commerce, thus satisfying the use in commerce requirement. The CTMO does not require much evidence to satisfy the use requirement, and they usually won't look past the basic facts to determine whether the evidence reflects a bona fide arms-length transaction (versus a fake sale to a friend or relative). Still, it takes some effort to create and maintain this evidence, and not all trademark squatters do it.
Second, the trademark squatter could file another, identical application before the three-year term is up, thereby preserving their rights with a new application even if the first registration is cancelled. But two can play that game. The real trademark owner could also file an application before the three year term is up – and then file a non-use cancellation exactly three years after registration. Sure, the application may be initially rejected if it's decided before the cancellation, but you can then file an appeal, and the cancellation should be complete by the time the appeal is decided. This strategy takes time to execute, and it is not without risks. (What if the trademark squatter filed a new application before you? What if the cancellation fails because the trademark squatter actually had used the mark in commerce?) But if it works, you can retrieve the mark at a much lower cost, without involving the courts, and without having to pay off a trademark squatter. Or if you don't want to wait for the various proceedings to wrap up, you could use the pending filings as leverage to negotiate a lower price from the trademark squatter.
Yes, it would be nice if China provided recourse against trademark squatters by more straightforward means. The letter of the Trademark Law provides remedies against trademark applications filed in bad faith: trademark oppositions (for pending applications) and invalidations (for existing registrations). But in the real world, trying to take on trademark squatters head-on has a low chance of succeeding. Unless you're willing to pay tens of thousands of dollars to retrieve "your" trademark, using the Chinese trademark system against them is usually the best hope.
Needless to say, cancelling a trademark squatter's registration is predicated on the assumption that the squatter hasn't used the mark in commerce. The more research you can do before filing a non-use cancellation, the better. Because if the squatter has in fact used the mark such that they can defeat a non-use cancellation, they’ll probably increase the sale price, figuring that you must really want the trademark.
