Recently, I handled a case involving the submission of evidence of use in a trademark cancellation proceeding for an export-oriented enterprise, which offered considerable practical insight. The client was engaged in the export trade of the relevant goods, and a competitor filed an application to cancel its core trademark on the ground that it had not been used for three consecutive years. As the trademark was the client’s principal core mark, its cancellation could have caused immeasurable losses to the company. Therefore, upon receipt of the Notice on Submission of Evidence of Use of the Registered Trademark, the client immediately established a dedicated internal project team and, taking into account our recommendations, actively proceeded with the collection and organization of evidence.

However, as the evidence was reviewed, a number of issues unfavorable to the case gradually emerged. For example, procurement contracts did not identify the trademark; customs declarations only showed the product name and HS code, without any reference to the trademark, or the goods identified were not among the designated goods covered by the registration; and overseas sales contracts were entirely in English and had not been translated into Chinese. Viewed individually, these documents might appear to demonstrate that the trademark had indeed been used. Under the evidentiary standards applicable to non-use cancellation proceedings, however, they were insufficient to form a complete chain of evidence.

Export-oriented enterprises conduct cross-border business, and their scenarios of trademark use and forms of evidence differ significantly from those of enterprises serving the domestic market. Accordingly, when submitting evidence of use, export-oriented enterprises should take their own business models into account rather than simply adopting the response strategies commonly used by domestic businesses. This article discusses how export-oriented enterprises can effectively prepare for this “battle for evidence.”

01. First, It Should Be Clear That Exported Goods May Also Constitute “Trademark Use”

A common misunderstanding among export-oriented enterprises is that a trademark must be used in domestic sales and circulation in order to constitute trademark use, and that goods exported abroad do not count as use “in China.” In non-use cancellation proceedings, however, this concern can be dispelled.

The Guidelines for Trademark Examination and Adjudication, in the section concerning the “Examination and Adjudication of Cases Involving Cancellation of Registered Trademarks,” expressly provide that:

Where the goods on which the disputed trademark is actually used are not circulated within China but are directly exported, such use may be recognized as use on the designated goods.

In simple terms, where a trademark is used on goods manufactured or processed in China and directly exported overseas, such use may likewise be recognized as trademark use within the meaning of the Trademark Law in non-use cancellation proceedings.

02. How Does the Evidence Submitted by Export-Oriented Enterprises Differ from That of Domestic Enterprises?

For ordinary domestic enterprises, trademark use generally takes place entirely within the mainland Chinese market. Core use scenarios include domestic wholesale and retail, online e-commerce transactions, offline brick-and-mortar operations, and cooperation with domestic distributors. The key consideration in determining trademark use is whether the trademark is affixed to the designated goods and whether such goods are circulated, promoted and sold in the domestic market so that the trademark can be recognized by the relevant public in China. Typical core evidence generally consists of sales contracts, value-added tax invoices and logistics documents. Contracts and invoices normally specify the product name, transaction amount and information concerning both parties to the transaction.

By contrast, the evidentiary chain for export-oriented enterprises is considerably more complex. Trademark use by such enterprises typically occurs throughout the entire cross-border trade process, with core scenarios including OEM production by domestic factories, customs clearance for export, execution of purchase contracts with overseas customers, and bulk cross-border sales. In many cases, there is no terminal circulation or sale of the goods within the domestic market.

Accordingly, core evidence should include not only domestic-side documents such as procurement contracts, procurement invoices and entrusted processing agreements, but also export-side documents such as export sales contracts, pro forma invoices/commercial invoices, packing lists, export customs declarations and ocean bills of lading. Documents from the procurement side and the export side should be capable of corresponding with one another and forming a complete evidentiary chain.

03. How Should Export-Oriented Enterprises Prepare Evidence?

First, evidence relating to procurement.

Procurement contracts entered into with domestic factories and the corresponding procurement invoices should be retained. The contracts should clearly specify the name of the goods, the brand or trademark, model numbers and other relevant information. Information contained in the value-added tax invoices should also correspond with the contents of the contracts.

Second, evidence relating to exports.

Export sales contracts with overseas customers, pro forma invoices/commercial invoices and packing lists should, to the extent possible, identify the trademark and the name of the goods. Export customs declarations should likewise preferably specify the product name, brand or trademark, model and specifications, in a manner consistent with the other documents. It should also be noted that Chinese translations should be submitted together with documents prepared in English.

Third, product photographs.

Photographs of products, product packaging or the packing process constitute direct evidence demonstrating the connection between the trademark and the relevant goods. Such photographs can visually demonstrate the manner in which the trademark is used, including nameplates affixed to the products themselves, trademark markings on product packaging, and labels on cartons during the packing process. Ideally, the photographs should also show product model numbers corresponding to the above-mentioned documents, as well as the date on which the photographs were taken.

Fourth, supplementary evidence.

Evidence relating to trade fairs, such as exhibition participation agreements, invoices and on-site photographs, as well as sales order information from overseas e-commerce platforms such as Alibaba and records of social media promotion, may all be submitted as supplementary evidence to demonstrate the public use of the trademark.

In addition to the above evidence, export-oriented enterprises should also pay attention to the general evidentiary requirements applicable to non-use cancellation cases. These include demonstrating use of the disputed trademark, use on the designated goods, use by the trademark registrant itself or by a licensee or another party using the trademark without acting contrary to the trademark owner’s will, and use within the prescribed period for which evidence is required.

04. Conclusion and Compliance Recommendations

The legislative purpose of the trademark non-use cancellation system is to activate trademark resources and clear unused registrations. For export-oriented enterprises genuinely engaged in international trade, cancellation of a trademark may directly affect their overseas business operations. Accordingly, evidence of trademark use should not be collected only after receipt of a non-use cancellation notice as an emergency measure. Instead, evidence preservation should be incorporated into every stage of the enterprise’s ordinary business operations.

Export-oriented enterprises are advised to use their trademarks in strict accordance with the trademarks and scope of goods approved for registration, and to establish a routine evidence archiving mechanism under which evidence of use is regularly preserved and a compliant, closed-loop evidentiary chain is established in advance.

Where trademarks are actually used on exported goods that are not covered by existing registrations, enterprises are also advised to file supplementary trademark applications covering the goods actually used, so as to better protect their trademark rights, prevent third parties from preemptively registering such marks, and mitigate the infringement risks that may arise from use beyond the approved scope of goods.