How do you prove a negative? China raises the bar for trade mark non-use cancellations

In China, trade mark registrations become vulnerable to cancellation if they are not used within three years of registration. To defend against a non-use challenge, the trade mark owner must provide evidence of use on relevant goods.

In some jurisdictions, the burden is on the challenger to prove non-use – this can be a difficult task, as even minimal use can sustain a registration.

Often, the only person who can easily confirm use is the trade mark owner. In many countries, the burden of proof is reversed—the challenge can be filed without evidence, and the owner must prove use.

However, the reversal of this burden can lead to abusive behaviour. The Chinese IPO has tightened up its procedures, partly in response to a registration which was challenged more than 60 times, forcing the owner to repeatedly defend the registration.

To file a non-use action in China we now need to provide more detailed evidence including:

1. Basic information about the registrant of the trademark subject to cancellation;
2. investigative reports and evidence of the registrant’s sales of goods or provision of services, business or office locations, etc.;
3. Investigative evidence from comprehensive online platforms or the like.

This higher evidentiary threshold should reduce the chances of spurious non-use challenges but will increase costs for those seeking to clear the path for new applications by cancelling existing registrations.

Currently, if you file a non-use action and it is defended, you cannot see the trade mark owner’s evidence unless you appeal the decision. This lack of transparency often leads to unnecessary appeals. Unfortunately, the Chinese IPO has not taken the opportunity to change this procedure during its review of non-use cancellation procedures.

China now sits between the extremes of jurisdictions like the UK, where no evidence is required, and Indonesia, which requires market surveys in at least five major cities to prove non-use.