Revocation for Non-use of Taiwan and China Trademarks: Comparisons between Laws, Regulations and Practices

Date: 1 April 2022

Although there are similarities in language between Taiwan and China, there are numerous differences in various fields between them, and the IP system, including the revocation process (also known as non-use cancellation), is no exception.

The revocation process is available both in Taiwan and China to facilitate the removal of trademark registrations that are no longer in use. Although there are some minor similarities, the process of examination, substantiation, and timeframe of the proceeding, just to name a few, in these countries are the opposite.

We have discussed the different determination of “identical good/services” held by the courts of Taiwan and China in our previous Wisdom News 1 . The following article focuses on the overall differences in the revocation proceeding from the perspective of relevant laws, regulations, and practices, and provides strategies adaptable in Taiwan and China.

Initiate a Revocation Proceeding

In Taiwan, an application for revocation of a registered trademark shall be filed with the Taiwan Intellectual Property Office (IPO).

In China, an application for revocation of a registered trademark shall be filed with the China National Intellectual Property Administration (CNIPA).

Applicants and Subjects of Revocation

With regard to the applicants and subjects of revocation, the provisions of the two countries are mostly the same:

  • anyone can file an application for revocation;
  • only trademarks which have not been put to genuine use within a continuous period of 3 years are vulnerable to revocation; and
  • revocation can be filed against all designated goods/services, or only against a part of the designated goods/services.

Practices of both countries indicate that genuine use includes the usage by licensees. Additionally, as observed from the actual practice in China, submitting a trademark license agreement or a license agreement which has been recorded by the CNIPA will significantly increase the chance for being recognized as having been put to genuine use in China.

Evidence of Genuine Use

Taiwan

If the trademark holder does submit evidence of genuine use, the examiner may require both parties to further submit new evidence and observations alternately until the submission is likely to delay the proceedings, or the facts and evidence are sufficiently clear for the examiner to make the decision. However, evidence of genuine use dated within a period of 3 months before the filing date of the revocation will not be taken into account.

China

In contrast to Taiwan, the CNIPA accepts evidence of genuine use that commenced or was resumed just before the filing of the revocation application. According to the “Regulation of Trademark Examination and Assessment”, the burden of proof solely lies on the trademark holder. Therefore, applying for revocation will be an effective strategy if the revocation applicant would like to negotiate with the trademark holder. After the submission of evidence and observations from the trademark holder, the examiner will start the examination right away. The revocation applicant cannot file submissions or participate in the examination.

Process of Examination of Revocation

Taiwan

The applicant for revocation should submit the evidence of non-use in the revocation application. If the trademark holder does not submit any response within a prescribed time, the examiner will start the examination directly. In such situation, the examiner will issue the decision in several months. If the trademark is revoked, the revocation of registered trademark will be published on the trademark gazette in another 6 months. Furthermore, there is no statutory time period for the IPO to make a revocation decision. It is quite usual that the examiner issues the decision after a year and a half from the date of application for revocation, or even longer.

China

The examination of revocation in China works in a way different from that in Taiwan. According to the China Trademark Law, the CNIPA should issue its decision within 9 months from the date of filing the revocation. The examination can be extended for another 3 months only if it is approved by the Administrative Management Department of Industry and Commerce of the State Council.

Appeals of the Revocation Decision

In Taiwan, any party that disagrees with the decision issued by the IPO can file an appeal with the Petitions and Appeals Committee of the Ministry of Economic Affairs. If the appeal is also rejected, the appellant can file an administrative suit with the Intellectual Property and Commercial Court, and further appealed to the Supreme Administrative Court.

In China, the disagreeing party can apply for a review of the decision with the Trademark Review and Adjudication Board. If the review is also rejected, the applicant can file a law suit with the Beijing Intellectual Property Court, and further appealed to the High People's Court of Beijing Municipality.

Legal Effect of the Revocation Decision

Either in Taiwan or China, the revocation decision does not have retroactive effect. It should also be noted that the revocation of the trademark registration becomes effective from the date of issuance of the decision, instead of the date of application for revocation.

Revoke an Earlier Trademark During Trademark Application for Registration

Considering the differences of the trademark application process between Taiwan and China, the process of application for revocation against an earlier trademark is also different in these countries.

Taiwan

The IPO will issue an “Advance Notice of Reasons for Disapproval” if the examiner believes that there is a likelihood of confusion between the trademark application and the earlier trademark.

After filing the application for revocation of the earlier trademark, the applicant can request for the suspension of trademark application examination until the end of revocation proceedings. The suspension request is almost certain to be approved in principle.

However, if only a part of the designated goods/services conflicts with the earlier trademark, the applicant may:

  1. File the revocation application against the earlier trademark;
  2. Request for division of the trademark application of registration for conflicting goods/services;
  3. Request for suspension of the divisional application including the contested goods/services.

Under this approach, the examination of the divisional application including non-contested designated goods/services will be continued so that the application can proceed to acceptance, and could be registered as early as possible.

China

Since China does not have the system of issuing a preliminary notification of refusal, a decision of refusal or partial refusal is directly issued to trademark applications that are found identical or similar to earlier trademarks. It is quite usual that the application for revocation is filed after the receipt of decision of refusal. The applicant may file a review if he is dissatisfied with the decision.

In most circumstances, the examination of revocation usually would run simultaneously and independently with the review of refused application and even the administrative litigation. It is also not possible to request for the suspension of review in view of the ongoing revocation. It is often seen that the decision of review is issued while the revocation is still under assessment. Thus, filing the application for revocation and a new application for registration at the same time is a common strategy in China.

Wisdom Comments

To sum up, the process of revocation in Taiwan is relatively disadvantageous to the revocation applicant in comparison with that in China, and the applicant should be prepared for a much longer period of revocation examination.

In addition to the differences in the process of examination, substantiation, and timeframe, it should also be noted that the assessment of genuine use and relating evidence is based on each country’s respective laws, regulations and guidelines. Therefore, the revocation applicant should make preparation in accordance with local regulations and practices while planning to file the application for revocation in Taiwan and China.

 

 

[1]Taiwan & China: Update practices in trademark non-use cancellation proceedings, Wisdom News Volume 19, https://www.wisdomlaw.com.tw/m/405-1596-85875,c12317.php?Lang=en

 

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