In this edition of our newsletter, we have compiled and addressed some of the most frequently asked questions from both professional and lay clients at this year’s Annual Meeting of the International Trademark Association.
1. Can we still file non-use cancellations in the name of a third party?
Short answer: Yes.
Due to the worsening trend of bad faith non-use cancellations and the exploitation of such actions to extract improper gain from brand owners, the China National Intellectual Property Administration (CNIPA) has since late 2024 implemented a series of measures to combat such bad faith filings.
Between early and mid-2025, CNIPA began requiring applicants to declare that they are the true applicants of the non-use cancellations and that no information was withheld from CNIPA. This sparked concerns about the practice of filing non-use cancellations in the name of a third party to conceal the true identity of applicants, often with the intent of avoiding retaliatory actions by trademark registrants, as the third party might face penalties from CNIPA.
The good news is that, since around June 2025, CNIPA has stopped requiring applicants to make such declarations. Our recent filings in the name of third parties have also been formally accepted without facing any objections or requisitions.
2. Is CNIPA now imposing a heavier evidential burden on non-use cancellation applicants to establish non-use?
Short answer: Yes, but not significantly.
Previously, when filing non-use cancellation actions, online search results from major Chinese search engines (e.g., Baidu) and e-commerce platforms (e.g., JD.com and Tmall) showing that the challenged mark is not in use would satisfy the evidential burden. Pursuant to the latest guideline published by CNIPA on May 26, 2025, applicants are required to provide detailed background information about registrants (e.g., registered business scope and operational status). Applicants are also required to provide market research findings (e.g., search results from industry-specific platforms) and evidence gathered through internet searches and on-site investigations, including materials from registrants’ official websites, social media accounts, online stores, and physical business premises or production facilities.
In practice, the burden is generally met by providing detailed background information about registrants, online search results related to their business operation (e.g., findings from their official websites and social media accounts) and keyword search results from at least three major online platforms, including e-commerce platforms, social media channels or other industry-specific platforms. Desk-based non-use investigations generally suffice, and on-site investigations are not mandatory. If CNIPA considers the burden has not been met, notices of correction will be issued requesting additional evidence.
3. Are there any other must-know developments in CNIPA’s examination practice for non-use cancellation cases?
Short answer: Yes. CNIPA may require applicants to withdraw or suspend non-use cancellation actions if there are already pending actions against the same trademarks.
We view this as another measure by CNIPA to combat repeated non-use cancellation actions against the same trademark with the ill intent to drive up legal costs for registrants and pressure them into settling with bad faith applicants. In our recent case, a third party filed a non-use cancellation four months before our client’s non-use cancellation action. CNIPA subsequently requested us to withdraw the action. Upon liaising with CNIPA, we were informed that this was a new practice. It is also possible to request a suspension of the action pending the outcome of the earlier action. As there is no formal guideline on this new practice, we recommend that applicants who receive similar notices of correction consult with CNIPA to confirm whether suspension is an acceptable alternative to withdrawal.
4. My copyright recordal application was rejected based on existing work. Does the Copyright Protection Centre of China (CPCC) now conduct substantive examination?
Short answer: CPCC still primarily conducts formality examinations, but it now uses an AI tool to screen applications and may raise objections if a work is clearly unoriginal or not copyrightable.
Previously, CPCC raised objections to works that are too simple to be original or copyrightable. We have now also received notices from CPCC due to the existence of identical works already recorded with the CPCC. CPCC has now integrated AI into their examination system to compare submitted works with recorded works. If a work is identical or highly similar to a recorded work, a notice of correction may be issued, requiring the applicant to amend the work or to provide proof of their authorship or ownership.
This recent change is a mixed blessing for brand owners. On one hand, if their works have already been recorded with CPCC, it can help prevent bad-faith filers from recording identical or highly similar works. On the other hand, if bad-faith filers have submitted preemptive recordal applications, it may block brand owners from filing their own works afterward. As will discussed further in the next question, it is strongly advisable to record your works with CPCC now to avoid potential obstacles caused by preemptive bad faith filings.
5. I received trademark opposition based on bad faith copyright recordal. How should I respond or push back?
Short answer: Establish authorship and prior use.
With CNIPA intensifying its crackdown on trademark squatting, preemptive copyright recordal has emerged as a new tactic used by squatters. Squatters are also relying on their bad faith copyright recordals to resist our opposition and invalidation actions and even basing their opposition and invalidation actions against our clients’ trademarks on their recordals. Moreover, our client’s copyright recordal applications are also blocked by such bad faith recordals.
We have successfully defended against claims based on bad faith copyright recordals by presenting evidence of our clients’ creation process, first use and earlier trademark or copyright registrations around the world. A copyright recordal certificate alone does not constitute conclusive proof of copyright. We successfully persuaded CNIPA to disregard the submitted certificates and reject the squatters’ claims.
There is currently no administrative procedure to invalidate bad faith recordals, and civil actions based on copyright infringement is the only recourse. Upon submission of judgments confirming copyright infringement, CPCC will cancel the recordal. This process could be complex and costly. As with trademarks, the best defense is early recordal of your logos, artworks, and other copyrighted materials.
6. CNIPA misunderstood the meaning of my trademark and raised objections based on deceptiveness or descriptiveness. What is your advice?
Short answer: Refer to authoritative dictionaries and correct inaccurate translations found in online dictionaries.
CNIPA often uses online dictionaries or translation tools to interpret meanings of foreign-language trademarks. The current trend is to prefer online dictionaries than traditional dictionaries, as consumers refer to them more. If the Chinese translations are descriptive or potentially misleading regarding the nature or characteristics of the applied-for goods or services, CNIPA may raise objections. Several of our clients faced objections due to the inaccurate Chinese translations.
We have successfully overcome such objections by explaining the true meaning of the trademarks to examiners and judges, supported by authoritative dictionary references. We also contacted providers of online dictionaries and translation tools to correct inaccurate entries and submitted the updated results as evidence. For foreign-language marks, we further argued that Chinese consumers are unlikely to be aware of their meanings, further weakening the basis for the objections.
Given the increasingly strict examination practices in China, we recommend a pre-filing review to assess inherent registrability. Our deep understanding of local culture and language nuances enables us to identify potential risks and provide tailored advice.
7. As CNIPA readily raises objections based on deceptiveness, do you have any practical tips for avoiding such objections?
Short answer: Add limitations to specifications.
We have successfully helped clients avoid and overcome objections based on deceptiveness by incorporating limitations into the specifications—specifying that the applied-for goods or services possess the qualities suggested by the trademarks. While CNIPA traditionally requires standardized descriptions in national applications, our recent filings with tailored limitations have been accepted, demonstrating a shift in practice. These limitations have also proven effective in rebutting deceptiveness objections.
For international registrations, applicants can amend specifications post-filing to include such limitations. However, for national applications, amendments are not permitted after submission. Therefore, it is crucial to include appropriate limitations at the time of filing.
8. Is it impossible to deviate from the CNIPA’s Classification Book when determining similarity of goods and services?
Short answer: Possible to deviate by submitting arguments.
Over the years, we have successfully persuaded CNIPA to assess the similarity of goods and services based on their nature rather than blindly following the Classification Book and obtained cross-subclass protection for our clients in various classes, such as Classes 3 and 25.
Recently, we overcame citation objections by arguing that goods classified into the same subclass were in fact dissimilar. In one case, we challenged CNIPA’s misclassification of goods of a prior international registration in Class 9 and lodged an administrative appeal to the Beijing Intellectual Property Court. The Court agreed with our position that similarity should be assessed based on the nature of the goods and services rather than rigid adherence to the Classification Book and ordered CNIPA to reissue the decision approving our client’s application.
We hope that the above have addressed questions that you may have regarding IP right protection in Greater China. If you have further questions, please feel free to contact us.
We would like to invite you to our upcoming webinar “A Review of Our Most-asked Questions at INTA & Top Burning IP issues in China” in September 2025. We will share our further insights and practical tips for effective IP right protection in Mainland China, with a live Q&A session for your questions.
For details and registration, please visit: -
• link 1 – for participants from the US and Australia
• link 2 – for participants from for Asia, Europe and other jurisdictions
About Us
Vivien Chan & Co. is a full-service law practice with offices in Hong Kong (1985) and Beijing (1993). We are consistently recognized as a premier law firm for and in Greater China. With 40 years of doing business in Greater China, our Hong Kong and China teams have an in-depth understanding and knowledge of the legal culture and market dynamics.
Our long established licensed law offices in Greater China have allowed us to develop deep local roots and an integrated global perspective necessary to help domestic businesses and multinational companies alike seamlessly manage even the most complex local and cross border transactions.
We have advised on some of the most significant acquisitions, arbitrations, real estate projects and intellectual property enforcement to date. This is particularly evident from our leading position in areas such as intellectual property, tax, employment, mergers & acquisitions and dispute resolution. Our ability to collaborate across practices and borders with ease allows us to bring the right team to every transaction, regardless of location.
