Trademark revocation could happen to a successfully registered trademark if the trademark owner uses or manages the trademark improperly. Should a trademark get canceled or revoked, the trademark owner will suffer not only economic loss but also severe disruption to its marketing plans and brand strategy. There is also a risk that the trademark owner will lose the trademark permanently after the one-year period before re-application for use of the affected trademark. Foreign investors are thus advised to take active measures to prevent trademark revocation and cancelation. For more information regarding trademark revocation, please contact Monica Li, Manager of Business Advisory Services, Beijing Office.

More and more marketing players from overseas are registering their trademarks in China. While it is indeed wise to be proactive about protecting intellectual property (IP), registering the trademark in China alone is not enough. In some cases, your trademark could be revoked or canceled by the Trademark Office, if it comes under the scope of certain conditions.

In this article, we address some of the most frequently asked questions about trademark revocation in China, including what will lead to trademark revocation, what are the consequences of trademark revocation, and how to prevent trademark revocation in the country.

What are the common grounds for trademark revocation in China?

According to the Trademark Law of China, a registered trademark can be revoked or canceled by the Trademark Office upon ex officio (as a result of one’s status or position) or a third party’s application based on the following grounds:

• Where the trademark registrant fails to renew the trademark in time. A registered trademark shall be valid for 10 years, commencing from the date of registration. Upon expiry of the validity period of a registered trademark, where the trademark registrant intends to continue using the trademark, it shall complete renewal formalities pursuant to the provisions within the 12-month period before the expiry date; where renewal formalities are not completed within the stipulated period, a six-month extension (grace period) may be allowed. Where renewal formalities are not completed upon expiry of the validity period, the registered trademark shall be cancelled.
• Where the trademark fails to use the trademark properly. The Chinese trademark law stipulates that the trademark shall be used consistently with what has been registered). Any arbitrary change to the registration matter, such as the color (if the color was specified when registering), font, or combination of each element, etc., will be deemed as non-standard use of the trademark. The trademark registrant would be ordered to make the correction within a stipulated period by the local administration for market regulation (local AMR), otherwise, the registered trademark will be revoked by the Trademark Office.
• Where the trademark registrant fails to practically and continuously use the registered trademark. The Chinese trademark law requires that the registered trademark shall be actually and continuously used on the goods/services that it has been registered for, in the territory/region it is registered in. If it has not been used for three years consecutively, without a proper reason, any organization or individual may apply to the Trademark Office for the revocation of the said registered trademark.
• Where a registered trademark becomes a generic name of the commodities for which it is approved. Under Chinese laws and regulations, where the relevant public generally believes that a certain name can refer to a class of goods, it shall be recognized as a generic name. For example, Simmons (in Chinese, 席梦思，xí mèng sī) was originally a trademark registered in the US by Mr. Zalmon G. Simmons and used for his mattress brand. It was widely used in China by the public to refer to ‘refined spring mattress’, such that in 2005, the Trademark Office declined the registration application of Simmons (席梦思) citing that it had become a generic name in China.

Among the four grounds, the third one — failing to use the registered trademark actually and continuously — is the most common reason that has led to trademark revocation in China in recent years.

What is the possible motive for the applicant to apply for revoking another’s trademark?

In the era of global integration and development of internet technology, all market players (enterprises or individuals) have more routes to gain knowledge of other’s IP, such as the trademark, and the profitability behind it. The applicants may want to take advantage of the business value attached to the trademark by getting the trademark revoked or canceled and then registering the trademark by themselves.