By Hansen Tao
One of the most powerful tools in the Chinese trademark system is the non-use cancellation procedure (commonly referred to as 撤三, “cancellation after three years”). Under Article 49 of the Trademark Law, if a registered trademark has not been used for three consecutive years without justifiable reasons, any party can file a request with the China National Intellectual Property Administration (CNIPA) to cancel the registration.
This rule is designed to clear “deadwood” trademarks from the register, prevent hoarding, and make space for marks that are actually being used in the market.
But this raises a crucial practical question: when does the three-year clock start ticking?
The answer depends on whether we are talking about domestic Chinese trademark registrations or Madrid international registrations that extend protection to China.
Domestic Trademark Registrations
For Chinese-registered trademarks, the calculation is relatively straightforward:
- The three-year period begins on the date of publication of the registration announcement (not the date of filing).
This means that even if a mark faced opposition proceedings and its exclusive right officially started later, the three-year count still runs from the announcement date.
So, if a trademark was published for registration on October 28, 2021, a non-use cancellation request could be filed starting October 28, 2024.
Madrid International Registrations Designating China
Here, the calculation becomes more complex because of the rejection (refusal) period built into the Madrid System.
When a Madrid international application extends to China, CNIPA has a set time to issue refusals:
- 12 months under the Madrid Agreement (which is more commonly applicable today), or
- 18 months under the Madrid Protocol.
The three-year period begins only after the refusal period has expired, assuming the mark was not refused or opposed.
Example:
If CNIPA received notification of an international application on January 28, 2020, and the mark was filed under the Madrid Protocol, the refusal period would expire on July 28, 2021 (18 months later). The three-year period would then run from that date, meaning cancellation could first be filed on July 28, 2024.
Special Scenarios for Madrid Registrations
Trademark practice often involves procedural complexities. Here are some key variations:
- Partial Refusal (Territorial Extension)
If only partial goods/services are refused and others are approved, the three-year period for the approved part starts from the refusal deadline applicable to those goods/services. - Pending Review or Opposition at the Expiry of Refusal Period
If, when the refusal deadline passes, the mark is still under opposition or review proceedings, the three-year period starts from the date the approval decision becomes effective, not from the initial refusal deadline. - Approval Before Refusal Deadline
If an opposition or review decision approving the mark takes effect before the refusal deadline expires, then the three-year period still starts from the refusal deadline, not from the earlier decision date.
These rules ensure that the three-year countdown aligns with when the mark becomes effectively and securely registered in China.
Why This Matters for Businesses
Understanding when the three-year period begins is crucial for both brand owners and competitors:
- For Brand Owners:
- Use your mark consistently and prepare to prove genuine use within three years of the relevant starting point.
- For Madrid registrations, track refusal deadlines carefully; your “use obligation” in China might start later than you think.
- Use your mark consistently and prepare to prove genuine use within three years of the relevant starting point.
- For Competitors:
- Monitoring the register allows you to identify marks vulnerable to cancellation.
- Strategic use of 撤三 can clear the path for your own registrations or market entry.
- Monitoring the register allows you to identify marks vulnerable to cancellation.
Final Thoughts
The three-year non-use cancellation system is a cornerstone of Chinese trademark law, balancing the rights of registrants with the need to keep the register uncluttered.
For domestic marks, the rule is relatively simple: count three years from the publication of registration. For Madrid marks, the timeline is tied to the refusal period and any subsequent opposition or review outcomes.
For international businesses operating in China, understanding these nuances can make the difference between securing long-term protection and losing a mark to cancellation.
At a time when trademarks are often the most valuable business assets, staying ahead of these technicalities is a strategic advantage.