FAQ about Canceling Trademarks Not Used for Three Consecutive Years

1. What should I do if the trademark opposition, revocation of the registered trademark is not used for three consecutive years, the online application for the invalidation of the registered trademark or the defense materials exceed the capacity limit?

Answer: According to Article 6 of the Provisions on Electronic Application for Trademarks, when submitting documents or materials for electronic trademark application, the prescribed file formats, data standards, operating specifications and transmission methods shall be observed. Article 9 stipulates that after the parties submit the electronic application for trademarks, the State Intellectual Property Office will no longer accept the follow-up materials related to the application submitted in paper form.

At present, when an application for opposition to a trademark, an application for cancellation of a registered trademark for non-use for three consecutive years, an application for invalidation of a registered trademark (hereinafter referred to as an opposition, revocation or invalidation) or a defense are submitted through the Trademark Online Service System, the relevant application or defense materials (including all kinds of follow-up materials) shall be submitted in accordance with the requirements of the Trademark Online Service System. If the size of the file exceeds the capacity limit, it will not be able to be submitted, and the relevant materials cannot be submitted in other forms that do not comply with the provisions of the electronic trademark application, such as paper, CD-ROM, USB flash drive, etc. Before applying for an online application or defense, the applicant and the trademark agency for the above-mentioned business should fully assess the scale of the electronic materials that need to be submitted in the process of business processing.

2. How to supplement the submission of evidence materials in the online application for opposition, revocation and invalidation?

A: First of all, the applicant needs to select “Yes” in the column of “whether to retain the right to provide supplementary materials” or “whether to submit supplementary evidence materials” when submitting the opposition and invalidation application. Applicants can submit supplementary materials within three months after selecting “Yes”. If they do not choose, they cannot submit supplementary materials.

Secondly, after the application is successfully submitted, select the specific case in the application management and click “Supplementary Materials” in the “Operation” column to perform the corresponding operations.

3. How to supplement the submission of evidence materials in the online application for opposition, revocation and invalidationWhat are the types of evidence materials that can be uploaded in the online application?

A: The format of the evidence materials that applicants can upload is required to be PDF files.

4. Do I need to upload the file again if there is garbled characters in the preview of the uploaded documents for opposition, revocation and invalidation?

Answer: If the preview of the uploaded file is found to be garbled or unclear, you need to upload the relevant file again.

5. To whom should the Notice of Reply to Trademark Opposition, Notice on Providing Evidence of Use of Registered Trademark, and Notice of Reply to Invalidation be sent?

A: If the applicant submits the trademark opposition application through electronic filing, the respondent will send a paper copy of the Notice of Reply to the Trademark Opposition. At the same time, a copy of the notice of reply will be sent to the China trademark registration application agency by electronic issuance.

If the applicant submits an application for cancellation or invalidation through electronic application, the respondent will be sent a paper copy of the Notice on Providing Evidence of the Use of the Registered Trademark or the Notice of Reply to the Invalidation Declaration. At the same time, a copy of the notice of reply will be sent to the trademark agency of the most recent business by means of electronic issuance.

6. How can the respondent obtain the electronic application materials submitted by the applicant?

Answer: The respondent (the respondent or the invalidated party) can use the download code in the attachment to the paper defense notice to obtain the electronic application materials online through the “Defense Materials Download” on the homepage of the China Trademark Network.

Users of the Trademark Online Service System can also download it from the “Response Management” of the Trademark Online Service System.

7. Under what circumstances can I defend online? How do I defend my defense online?

A: If the application for trademark opposition, revocation and invalidation is submitted electronically, the respondent can choose to defend electronically online or on paper.

If the respondent chooses to defend online, it can enter the defense management of the trademark online service system and enter the download code/binding code in the [Defense Binding] channel to conduct the online defense.

It should be noted that if the download code/binding code is bound and the electronic defense is completed, the paper defense cannot be re-established.

8. How does the time limit for electronic application start to be defended?

Answer: If an application for opposition, withdrawal or invalidation is submitted through an online application, the calculation of the time limit for defense shall be based on the postmark date of the envelope of the main notice of defense received by the respondent. The respondent of the opposition or invalidation shall reply within 30 days from the date of receipt of the notice of defense; Where the parties need to supplement relevant evidentiary materials, they shall make a statement in the statement of defense and submit it within three months from the date of submission of the statement of defense. The respondent shall reply within two months from the date of receipt of the notice of defense. According to Article 12 of the Regulations for the Implementation of the Trademark Law, the date on which various time limits begin shall not be counted as time limits.

9. If the application for trademark opposition, cancellation or invalidation is electronic, how does the Trademark Office send the relevant documents?

A: If the respondent chooses an electronic reply, all documents except the notice of reply will be sent electronically to the relevant parties or trademark agency.

If the respondent chooses a paper reply, all documents issued by the applicant shall be issued electronically (except for those involving the exchange of evidentiary materials), and the respondent shall issue the documents on paper. If the exchange of evidence is involved, if the respondent chooses to submit the reply in paper, the applicant will receive a paper evidence exchange notice with the binding code of the reply and a copy of the defense materials.

10. How to change the China trademark agency in the process of trademark opposition, revocation and invalidation?

Answer: According to the type of business handled, either the applicant or the respondent can change, add or remove the agent through the “Agent Change” channel under the Trademark Opposition, Trademark Cancellation Application for Three Years, and Trademark Review and Adjudication Application in the Trademark Online Service System (Note: it is not the “Change Agent/Document Recipient” in the subsequent trademark application).

11. What are the restrictions on “legal and factual basis” in the online filing of trademark opposition?

Answer: This part needs to be filled in according to the requirements of the template, and the total number of words should not exceed 2000 words. 2000 words includes all displayable and non-displayable characters.

12. When filing an online trademark opposition, if one piece of evidence supports multiple legal provisions, can the same evidence be cross-cited under different legal provisions?

A: Yes. In the discussion section of “Legal Basis and Factual Basis” or evidence, it is sufficient to note that there is also evidence in a certain legal article.

13. When applying for an objection online, do other materials in the electronic application need to be stamped except for the power of attorney and the qualification certificate of the entity?

A: Both the opposition application and the reason for the objection are filled out online and do not need to be stamped. If it is deemed necessary to upload stamped materials, stamped materials can be uploaded, and there are no mandatory requirements.

14. If the application for revocation is submitted through the online application system, does the revocation review also have to be an online application?

Answer: At present, the online application function has not been opened for the revocation review. The Trademark Office will continue to optimize and improve the trademark online service system and continuously expand the business scope of the online service system.

15. What materials are considered valid evidence of use when withdrawing the online application?

A: The evidentiary materials used to prove that the trademark at issue has not been non-used for three consecutive years shall meet the following requirements:

(1) the logo of the trademark at issue can be displayed in use;

(2) it can show that the trademark at issue is used in the goods/services designated for use;

and (3) the user of the trademark at issue can be shown to include both the trademark registrant himself and others licensed by the trademark registrant. If the use is permitted to others, it shall be able to prove the existence of the licensing relationship;

(4) the date of use of the trademark at issue can be displayed, and it should be within three years from the date of cancellation of the application;

and (5) be able to prove the use of the trademark at issue within the territorial scope of the validity of the Trademark Law.

The specific forms of trademark use, including the use of trade documents related to goods or services, mainly include: sales contracts, service agreements and their corresponding invoices, inspection reports, import and export declarations, etc.; Trademark registration information, basic enterprise information, award information, etc. generally cannot be used as evidence of use. (For more information on providing evidence of trademark use, please visit the “Trademark Application Guide” section of the China Trademark Network.) Website: https://sbj.cnipa.gov.cn)

16. If a registered trademark with one mark and multiple classes applies for cancellation of multiple classes, can one application be shared?

A: No, at present, no matter whether the application for withdrawal is submitted online or on paper, one application can only be submitted for one category.

17. When is the application for invalidation filed?

A: There is no time limit for a request for invalidation filed under Article 44 of the Trademark Law. The application for invalidation filed under Article 45 of the Trademark Law shall be filed within five years from the date of registration of the trademark. In the case of bad faith registration, the owner of a well-known trademark is not subject to a five-year time limit.

18. How long does it take to receive the notice of payment after the application for invalidation is filed?

A: According to the progress of the work, the current average is to complete the formal examination within 30 days from the date of application. After the formal examination is completed, the system will issue a payment notice within a certain period of time.

19. How to choose the legal terms when applying for invalidation? Do you need to check them all?

Answer: According to the circumstances of the case, you can check the corresponding legal clauses of the claim.

20. Do I need to divide the original copy of the online application for invalidation? How do I submit inconsistent copies?

A: According to Article 20 of the Trademark Review and Adjudication Rules, a party participating in the review shall submit a corresponding number of copies according to the number of the other party, and the content of the copy shall be the same as that of the original.

If the request for invalidation is submitted online, the original and copy should be consistent, and one document can be uploaded. If the original and copy are inconsistent, they cannot be submitted through the online service system, and it is recommended to submit them by mail or on-site.

21. When the application for invalidation of a registered trademark is heard, will the evidence be transferred to the applicant for cross-examination? Or is there a situation where there is no cross-examination and a direct ruling according to the circumstances of the case?

Answer: If the respondent makes a reply within the time limit prescribed by law, our bureau will deliver the copy of the reply submitted by the respondent to the applicant for cross-examination.

22. If the respondent does not receive the paper notice of defense, how to respond?

Answer: If the respondent does not receive the paper notice of defense and the attached page of the download code through the online application for invalidation, it should first obtain the barcode of the registered letter of the notice of defense through the consultation telephone and find the letter through the post office. If the confirmation letter cannot be found, you can apply for marking at the review window in the office hall of the Trademark Office, and the application for marking should bring the relevant procedures that meet the requirements.