Article 49.2 of the Trademark Law stipulates: "Where a registered trademark becomes the generic name of the goods it has been approved to use or where its registrant fails to use it without justified reasons for three consecutive years, any party or individual may apply to the CNIPA for cancellation of the registered trademark."  This provision is mainly based on the legislative intent of the Trademark Law, which is, after the trademark is registered, the trademark registrant should actively use it commercially to avoid idleness, hoarding or even reselling of the trademark. Therefore, the trademark registrant has the legal obligation to actively use the registered trademark.

Based on this legal provision, as long as the trademark has been registered for three years, if there is no real commercial use, anyone can file a cancellation application on the grounds of "non-use". In order to maintain the validity of the trademark, the trademark registrant can defend the "trademark should not be cancelled" in such cases on two grounds:

① Provide evidence of use of the registered trademark over the designated goods; 

② Provide a reasonable justification for non-use.

In practice, however, the situation where a trademark is not used due to force majeure is relatively rare. Therefore, submitting legally valid evidence of trademark use is very important in the non-use cancellation procedure.

In practice, there are numerous cases where a trademark is cancelled due to the deficiencies in evidence submitted by the registrant, leading to non-recognition by the office. If a trademark has indeed been used but the rights are lost solely because of deficiencies in the submitted evidence, it is unfortunate. This article analyzes and discusses different evidentiary situations encountered in the practice of cancellation for non-use within three years, hoping to provide some reference for trademark registrants.

01 

Announcement of Trademark Assignment or Announcement of Trademark Licensing Record- Can it be considered as the valid use of a registered trademark?

In practice, there are situations where a trademark has been registered for three years and has just been approved for assignment to an assignee, but someone else files an application for cancellation due to non-use for three years.  In such situations, can the assignee rely on the trademark assignment announcement to prove that the trademark has been used or demonstrate that the trademark has an intention to use? Alternatively, if a trademark has been registered for three years and licensed for use by another party, with the trademark license agreement recorded and announced, can the trademark license record and announcement be used to prove that the trademark has been used or has an intention to use?

The use of a trademark includes the use by the trademark registrants themselves, as well as the use by others with the permission of the trademark registrant (licensees), and other evidence of use provided by those who do not act against the will of the trademark registrant. However, only assigning or licensing without actually using the trademark, i.e., only submitting trademark assignment or license record announcements, cannot be considered as use in the sense of trademark law.

As an example: In the review case of non-use cancellation of trademark No. 4013845 "", the CNIPA held that: the evidence submitted by the respondent in the case, Evidence 1, which is the assignment announcement of the disputed trademark, cannot prove the use status of the disputed trademark. Evidence 2, the trademark usage authorization letter, can only prove the licensing situation of the disputed trademark but cannot prove the actual use status of the disputed trademark.

It can be seen that if only the trademark assignment or license announcement is submitted, it can only prove the fact of trademark assignment or license, but not the actual use behavior of the trademark.  It is necessary to submit other relevant evidence of actual use of the trademark in order to maintain the registration of the trademark. On the contrary, during the negotiation of trademark assignment that has been registered for more than three years, the use situation of the trademark should also be understood, or the obligation of the assignor to provide use evidence should be agreed upon, so as to avoid the legal risk of cancellation due to non-commercial use within three years after the trademark assignment or the refusal of the assignor to cooperate in providing use evidence.

02

Use on goods similar to the designated goods- Can it be considered as the valid use of a registered trademark?

According to the "Trademark Examination and Trial Guidelines," "If a trademark registrant uses their registered trademark on the goods for which it is approved, the registration on similar goods may be maintained." This suggests that as long as evidence of use on one designated goods is provided, the registration can be maintained for all similar goods. However, if no use is made on the approved goods but use is made on similar goods, can this be considered use of the registered trademark on the approved goods?

In the review case of non-use cancellation of trademark No. 11249614 "", two of the goods for which the disputed trademark was applied for cancellation are "propolis and cordyceps chicken essence". Part of the evidence provided by the applicant is sales contracts and invoices, which show that the disputed trademark involves the sale of goods such as "quinoa, honey, goji berries, and snow chrysanthemum". Among these, "honey" is a standardized good listed in the "Classification of Similar Goods and Services", and it belongs to similar goods with the goods approved for use with the disputed trademark, namely "propolis and cordyceps chicken essence". However, the trademark registrant should use the registered trademark on the goods approved for use, i.e., "propolis and cordyceps chicken essence". The use of the registered trademark on similar goods outside the approved goods, such as "honey", cannot be considered as use on the approved goods, "propolis and cordyceps chicken essence". Finally, the registration of the disputed trademark on the goods "propolis and cordyceps chicken essence" was cancelled.

It is evident that while providing evidence of use on the goods for which a registered trademark has been approved can maintain its registration on similar goods, failure to provide such evidence may result in the registration being cancelled, even if there is evidence of use on goods considered similar to those specified.

Therefore, the trademark registrant should use the registered trademark in accordance with the approved goods scope, and the use on similar goods cannot maintain the use on the approved goods. If there is a difference between the actual used goods and the approved goods, supplementary registration should be made in time to prevent instability of trademark rights.

03 

The goods actually used belong to the subordinate goods of the approved goods- Can it be considered as the valid use of a registered trademark?

When registering a trademark, many applicants prefer to choose relatively broad goods, such as "cosmetics, medical devices and instruments", in order to expand the scope of protection of the trademark, believing that the scope of protection of such goods is relatively broad and can cover the scope of rights protection on more goods. However, in a case of non-use cancellation for three years, if the goods actually used are subordinate goods of the approved goods, can it be regarded as the use of the registered trademark on the approved goods?

In the review case of non-use cancellation of the trademark No. 11212247 "CCXO", after examination, the CNIPA held that: the licensee sold a certain number of "CCXO" brand "suits" at the "CCXO flagship store" operated on the Pinduoduo e-commerce platform during the review period, and several consumers conducted after-sales evaluations on the products. The goods "clothing" approved for use by the disputed trademark and the goods "suit sets" actually used by the disputed trademark are, in terms of functional use, hierarchical concepts, and in terms of sales channels and consumer objects, the two have commonalities. Therefore, it can be determined that the respondent actually used the disputed trademark on the goods "clothing" approved for use by the disputed trademark during the review period. However, there are significant differences between the goods "baby full suits; swimsuits; wedding dresses" approved for use by the disputed trademark and the goods "suit sets" actually used in terms of functional use and consumer objects. Therefore, the evidence submitted by the respondent cannot prove that the disputed trademark was openly and truly used in commercial use on the goods "baby full suits; swimsuits; wedding dresses".  Finally, the registration of the disputed trademark on the approved goods "clothing" was maintained, while the registration on the goods "baby full set; swimsuit; wedding dress" was cancelled.

In the review case of non-use cancellation of trademark No. 13566006 "FATSHARK", the CNIPA believes that commercial use of a trademark includes using it on goods, packaging or containers for goods, and documents related to the transaction of goods, or using it in advertising, publicity, exhibitions, and other commercial activities.  Evidence to prove the use of the disputed trademark should be able to show the disputed trademark's logo, the goods it is used on, and its user. In this case, the applicant submitted evidence proving that they actually sold "VR glasses, video glasses" marked with the disputed trademark during the designated period. However, such goods belong to subordinate goods of "remote control devices" in Subclass 0913.  They differ significantly from the goods approved for use with the disputed trademark, namely "electric devices for remote signal control, industrial electrical equipment for remote control operation, eyeglass cases, frames, glasses, navigation instruments" in terms of function, purpose, and sales channels. They are not similar goods, so it is difficult to prove that the disputed trademark was commercially used on "electric devices for remote signal control, industrial electrical equipment for remote control operation, eyeglass cases, frames, glasses, navigation instruments" during the designated period.  Finally, the disputed trademark was cancelled.

It can be seen that, in general, the use of lower-level conceptual goods can maintain the registration of higher-level goods. However, it is also necessary to pay attention to whether the goods actually used and the approved higher-level goods are similar goods. If they are not similar goods, the registration of the approved goods cannot be maintained.

Therefore, when selecting goods for trademark application, if the "Classification of Similar Goods and Services" has standard goods that are actually in use, it is recommended to select the standard goods for registration.  If there are no corresponding standard goods, consider choosing an upper-level good that belongs to similar goods and is relatively close for registration, to prevent subsequent trademarks from being at risk of revocation.

04 

Evidence of internal corporate use - Can it be regarded as valid use of a registered trademark?

In cases of cancellation for non-use over three years, some trademark registrants provided internal business use evidence, such as store decoration, employee uniforms, notebooks, paper cups, envelopes, paper bags, and business cards with the disputed trademark logo for use evidence to prove the use of the disputed trademark. Some even provided product inspection reports and orders to prove the use of the disputed trademark. However, in these circumstances, due to the unilateral nature of the use evidence or because they only demonstrate that the approved goods meet quality standards, they cannot prove that the disputed trademark entered the market for commercial circulation. Therefore, they cannot be considered as actual use evidence under the meaning of trademark law.

In the review case of non-use cancellation of Trademark No. 18010052 "ZENGCAI," the CNIPA held that: the store decoration pictures were self-made evidence, some of which lacked time stamps. The sales list was stamped by the authorized party alone, and without other supporting evidence, it was difficult to prove the actual use of the disputed trademark. A comprehensive review of all available evidence did not sufficiently demonstrate that the disputed trademark had been used on the goods, finally leading to the cancellation of the disputed trademark.

In the review case of non-use cancellation of trademark No. 29003132 "", the CNIPA held that: the inspection report did not reflect the disputed trademark, and the report was commissioned for inspection rather than sampled from the market, failing to prove that the inspected products had entered the market circulation. Therefore, the disputed trademark was cancelled.

It can be seen that only providing internal use evidence or inspection reports, delivery notes, order forms, etc. cannot prove the commercial use of the disputed trademark. It is necessary to provide other valid commercial use evidence at the same time to form a complete chain of evidence to prove the use of the disputed trademark.

05

All products are exported and not processed in the Chinese market- Can it be recognized as the use on the designated goods?

In practice, some trademark registrants only provide OEM processing services, and the goods they produce are not sold in the Chinese market but are all exported overseas. In a non-use cancellation case, can this be regarded as the use of the registered trademark on the approved goods?

In the review case of non-use cancellation of trademark No. 15119363 "", the respondent provided the following main evidence: agreements, invoices, customs declaration forms, payment vouchers, etc., for the commissioned processing of BOSSA NOSSA over tops, trousers, swimwear, swimsuits, hats, etc. in China.  After examination, the CNIPA found that the evidence submitted by the respondent showed that it had commissioned Chinese mainland enterprises to manufacture "BOSSA NOSSA" brand tops, trousers, swimsuits, straw hats, beach hats, etc. The export declaration form could display the disputed trademark. Although the above goods were only for export, such manufacturing behavior occurred in Mainland China, and this kind of "manufacturing behavior occurs in Mainland China and is sold to foreign regions" is one of the main forms of foreign trade in our country at present. Therefore, it should be recognized that the above use constitutes a real, positive and public use. Therefore, based on the evidence submitted by the respondent, a complete chain of evidence can be formed to prove that the respondent has made real and effective commercial use of the disputed trademark on the reviewed goods such as "shirts; trousers; swimsuits; hats (headgear)", and other reviewed goods that belong to the same or similar goods should also be maintained.

This has been clearly stipulated in the Trademark Examination and Trial Guidelines: if the disputed trademark is actually used for goods that are not circulated within China but directly exported, it can be recognized as constituting use for the approved goods.

06

A trademark registrant has two trademarks that are substantially the same but different. Can the evidence of use of one trademark maintain the registration of the other trademark?

In trademark non-use cancellation cases, administrative and judicial authorities generally adopt the same review standards, which mean that if a trademark in actual use has differences compared to the registered trademark but its distinctive elements remain unchanged, the use of the registered trademark can be maintained. However, if there are two different registered trademarks under the name of the trademark registrant, and the distinctive elements of these two trademarks are identical, can the evidence of use of one trademark maintain the registration of the other?

In the review case of non-use cancellation of trademark No. 9942522 "同美", the CNIPA held that: the applicant's product procurement contract clearly shows the trademark as "同美家 TOPMO FAMILY", and after checking, the applicant has registered several "同美家 TOPMO FAMILY" trademarks under his name. The use by the applicant of these other registered trademarks cannot be considered as use of the disputed trademark "同美" in this case.

In the review case of non-use cancellation of trademark No. 1939101, "", the CNIPA held that: First, the evidence submitted by the respondent, such as sales contracts, invoices, product inspection reports, etc., indicate that the product name is "MAYKING" and "美景". Second, the respondent has registered a number of "MAYKING" series trademarks. Therefore, considering that the disputed trademark in this case contains graphic elements, the aforementioned use evidence of the trademark cannot be directly attributed to the disputed trademark and cannot be considered as commercial use evidence of the disputed trademark.

It can be seen that if the trademark registrant has multiple registered trademarks in his name, he needs to provide corresponding evidence of use for the trademark logo that has been subject to a non-use cancellation action.  Even if the distinctive parts of those trademarks are identical, if the use evidence provided all pertains to another registered trademark, it may not be possible to maintain the registration on the trademark being revoked.

In summary, the legislative intent behind the non-use cancellation action is to encourage trademark registrants to actively use their trademarks and clear idle resources, preventing the hoarding of trademarks. Therefore, in some "non-use cancellation" cases, as long as the trademark registrant can provide evidence that the disputed trademark has been commercially used; the examiners generally adopt a position favorable to the trademark registrant and maintain the registration. However, the relevant evidence needs to point to the disputed trademark, and the evidence must form a complete chain of evidence, proving that the disputed trademark was commercially used during the designated period, in order to maintain the registration.

It can be seen that in the non-use cancellation procedure, the legal and effective evidence of use is very important. This article analyzes the problems that may be encountered in the process of providing evidence, hoping to provide some reference and advice to trademark registrants. It is recommended that trademark registrants register trademarks according to actual needs and use trademarks in accordance with the registered trademark form and the approved product scope. If you encounter a non-use cancellation action, you should provide legal and effective evidence in accordance with the law to maintain the validity of the trademark.