Keywords: Trademark Rights / Administrative Litigation / Three-Year Non-Use Cancellation of Trademarks 
Handling Attorney: Qiu Na 
Facts of the case: On January 14, 2021, a certain company applied to register the trademark “Somewhere.” However, the trademark registration application was rejected by a certain Intellectual Property Office because the trademark “Somewhere” was deemed similar to two previously registered trademarks in the same class of goods. Dissatisfied with the rejection decision, the company filed a request for review with the same Intellectual Property Office; however, this request for review was also rejected. 
On January 14, 2022, a certain company, through its appointed agent lawyer, filed an administrative litigation action with the Intellectual Property Bureau challenging the rejection of its trademark application. During the litigation, the company applied for cancellation of the cited trademark on the ground that it had not been used for three consecutive years, thereby removing the prior rights obstacle. However, since the cancellation decision had not yet taken effect, the Beijing Intellectual Property Court dismissed the company’s claim in the first instance. 
Subsequently, the company in question appealed to the Beijing Higher People’s Court. During the appeal period, the decision revoking the cited trademark took effect, eliminating the grounds for rejecting the trademark registration application. Consequently, the second-instance court reversed the first-instance judgment, revoked the first-instance ruling, and overturned the decision on the rejection of the trademark review request. The court ordered the relevant Intellectual Property Office to re-examine and make a new decision on the company’s request for review of the rejection of its “某某” trademark application. 
Key highlights of the case: After taking on the case, the lawyer conducted market research and discovered that the owner of the earlier-registered trademark had not actually used the trademark in the relevant designated categories. Consequently, the lawyer filed a request for cancellation of the earlier-registered trademark, thereby removing the prior rights obstacle to the client’s trademark application. By striking at the root of the problem, the lawyer secured a favorable outcome for the client. 
Typical Significance: As the total number of trademark registrations in China continues to rise, trademark resources are becoming increasingly scarce, and new trademark registration applications are increasingly encountering obstacles from earlier identical or similar trademarks. Therefore, in order to conserve trademark resources and to encourage trademark owners to engage in genuine, lawful, standardized, public, and effective commercial use of their registered trademarks within the scope of the designated goods or services—thereby enabling trademarks to fulfill their identifying function, activating trademark resources, and preventing trademarks from lying idle and unused—a “three-year non-use” revocation system for trademarks has been established. The “three-year non-use” revocation procedure has also become the most effective means for trademark applicants to remove prior trademark obstacles and secure trademark registration approval. 
In practice, “Section 3 cancellation” actions aimed at removing prior-filed obstacles to trademark registration are concentrated on the following three procedures or stages: 1. Before or at the time of filing a trademark registration application: If, during the search conducted by the applicant prior to filing a trademark application, the applicant discovers an earlier identical or similar trademark that meets the conditions for cancellation, the applicant may file a Section 3 cancellation request either before or concurrently with the submission of the trademark application, thereby proactively removing the obstacle. 2. After the trademark registration application has been rejected: If the trademark registration application is rejected due to the existence of an earlier identical or similar trademark that blocks registration and the earlier trademark meets the conditions for cancellation, the applicant may, while filing a request for reconsideration of the rejection, simultaneously file a Section 3 cancellation request against the earlier trademark, thus eliminating the obstacle. 3. When an objection or invalidation request is filed by a third party after the preliminary announcement of the trademark or its registration: After the preliminary announcement or registration of a trademark, if a third party files an objection or invalidation request on the grounds that it owns an earlier identical or similar trademark, and the earlier trademark claimed by the third party meets the conditions for cancellation, the trademark applicant or registrant may, while responding to the objection or invalidation request, also file a cancellation request against the earlier trademark. 
In this case, the trademark applicant failed to conduct a search prior to filing the trademark registration application and thus did not discover any earlier, similar trademarks, resulting in the rejection of the registration application. However, after the registration application was rejected, the applicant promptly took appropriate action by filing a request for review and a “three-year cancellation” petition. By leveraging the “three-year cancellation” mechanism for trademarks, the applicant successfully removed the obstacles to its rights.