If your trademark has just been approved by the CTMO (Chinese Trademark Office) recently or you are thinking to file for trademark registration yet. Then this blog is for you on how to avoid “non-use cancellation”!
Did you know that your trademark in China is vulnerable to “non-use” cancellation from the registration date?
If a registered trademark has not been used for three consecutive years. Any party may file a non-use cancellation to the CTMO.
How to prove you are using your TM in China?
To avoid your TM’s IP from being canceled by a third party, the original trademark holder should collect the following types of evidence. Keep this evidence handy in case there is an attempt to cancel your TM by a 3rd party at some point in the future.
Appropriate and Inappropriate Evidence of Trademark Use (From China Law Perspective)
The Chinese Trademark Office (CTMO) recently issued the following guidelines. According to the trademark law in PRC, here are some of the key points regarding the instructions on the use of evidence of trademark:
“1. The specific manifestations of the use of trademarks on designated commodities are:
1. Attach the trademark to the goods, commodity packaging, containers, labels, etc. by direct attachment, engraving, branding or weaving, or use it in the product additional label, product manual, introduction manual, price list, etc.;
2. Trademarks are used in transaction documents linked to the sale of goods, including use in commodity sales contracts, invoices, bills, receipts, import and export inspection and quarantine certificates, customs declaration documents, etc.;
3. Trademarks are used on media such as radio, television, or in publicly distributed publications, as well as advertisements for trademarks or trademarks using billboards, postal advertisements, or other advertising methods;
4. Trademarks are used in exhibitions and fairs, including printed materials and other materials provided at exhibitions and fairs;
5. Other forms of trademark use that comply with the law.
2. The specific manifestations of trademark use on designated services are:
1. Trademarks are used directly in service places, including introductory manuals for service, signage for service venues, store decoration, staff clothing, posters, menus, price lists, lotteries, office stationery, letterheads, and other items related to designated services.;
2. Trademarks are used on documents and materials related to services, such as invoices, remittance documents, service agreements, maintenance and repair certificates, etc.;
3. The use of trademarks in media such as radio or television, or in publicly distributed publications, and advertising by means of billboards, postal advertisements or other advertising methods for trademarks or the use of trademarks;
4. Trademarks are used in exhibitions and fairs, including printed materials and other materials used in exhibitions and exhibitions;
5. Other forms of trademark use that comply with the law.
3. The following circumstances shall not be regarded as the use of trademarks in the sense of the Trademark Law:
1. The publication of the trademark registration information or the statement of the trademark registrant regarding the exclusive right to its registered trademark;
2. Used outside of an open commercial sector;
3. Use only as a gift;
4. Only transfer or license behavior without actual use;
5. Symbolic use solely for the purpose of maintaining trademark registration.
4. The following evidence is not considered to be trademark use in the sense of the Trademark Law:
1. A contract for the sale of goods or an agreement or contract for the provision of services;
2. written testimony;
3. A situation where it is difficult to identify whether the physical evidence, audio-visual materials, website information, etc. have been modified;
4. Physical replicas.
5. The following circumstances may perhaps be considered valid reasons why your TM was not to be used for three consecutive years:
1. Force majeure
2. Government policy restrictions;
3. Bankruptcy liquidation;
4. Others legitimate situations, beyond the control of the trademark
Registrant, that prevent them from using the TM.”
Rules and enforcement for “non-use” of TM is changing
Until recently, Beijing held a very liberal stance on what was considered acceptable evidence of trademark use. And it was fairly easy to protect yourself from claims on non-use. But the situation has changed.
For example, in the past, the authorities would accept just about any type of proof that the mark was being used, even if this proof was clearly manipulated by photoshop. For example, it was not uncommon for trademark owners who were not actually using the marks, to forge “evidence” after the fact, if a 3rd party claimed non-use.
But today it’s very different, the trademark owners should follow the guiding principles listed above. If a non-use claim is raised, they need to provide appropriate evidence that is relevant to public and lawful use of the trademark in business to defend a non-use cancellation application.
Important tips to protect your TM rights in China
When defending against a claim of non-use, all evidence must come from China.
- For example, actual domestic sales in China would be strong evidence to protect the trademark against a non-use cancellation. However, an order delivered outside China, even if it includes the trademark, is not strong evidence.
- If you are selling to a Chinese company and there is no mentioned of the TM in your contracts (under signature!) and shipping documents…then you are exposed to non-use claims.
Conclusion: How to avoid exposure to claims of non-use of TM in China
Simply put, be sure to use your TM in China and build a case file of evidence showing actual use of the TM in China. Most likely, you will never face a claim of non-use. But if you do, you will be able to easily defend yourself.
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