Keywords: Trademark rights; administrative litigation; trademark cancellation for non-use. 
Handling Attorney: Qiu Na 
Basic Facts of the Case: 
A certain company applied to a certain intellectual property office to register the trademark “Somewhere, Somewhere.” However, because the trademark “Somewhere, Somewhere” was deemed similar to a previously registered trademark, the company’s application for trademark registration was rejected by the intellectual property office. Dissatisfied with this rejection decision, the company filed a request for review with the same intellectual property office; however, the request for review was also rejected. 
On February 24, 2023, 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. In the first-instance judgment, the Beijing Intellectual Property Court ruled to revoke the decision rejecting the company’s trademark application and ordered the Intellectual Property Bureau to reissue a decision on the company’s request for review of the rejection of its “XXXXXX” 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-registered 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, revitalizing trademark resources, and preventing trademarks from lying idle and unused—the “Three-Year Abandonment” system for trademarks has been established. The “Three-Year Abandonment” system 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 simultaneously with the submission of the trademark application, thereby proactively removing the obstacle. 2. After a trademark registration application has been rejected: If a 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, also 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 after 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, simultaneously 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, thus failing to identify any earlier, similar trademarks and missing the opportunity to file an opposition for cancellation of those earlier trademarks in advance. As a result, the registration application was rejected. However, after the registration application was rejected, the applicant promptly filed a request for review and an opposition for cancellation of the earlier trademarks. By leveraging the “cancellation for non-use” (or “three-year cancellation”) provision of trademark law, the applicant successfully removed the obstacles to its own trademark rights.