I. Legal provisions on the use of trademarks Article 48 of the Chinese Trademark Law stipulates: "The use of a trademark as referred to in this Law means the act of using a trademark on goods, packaging or containers for goods, or on transaction documents for goods, or using a trademark in advertising, exhibitions and other commercial activities to identify the source of goods." Trademark registrants are obligated to properly and continuously use the registered trademarks in accordance with laws and regulations. To avoid the right holders from not using their marks after registration, Article 49 of the Chinese Trademark Law stipulates that if a registered trademark has not been used for three consecutive years without justifiable reasons, any entity or individual may apply to the Trademark Office to cancel the registered trademark.
II. Forms of trademark use Trademarks are divided into goods trademarks and service trademarks, and the use of both types of trademarks requires commercial use but the specific forms of use are different as follows.
・ Forms of trademark use on products 1.The use of trademark on the goods, packaging, container, label, affixed tags, product manuals, introductory brochures, price lists, etc.;
2.The use of trademark on transaction documents related to the sale of the product, including sales contracts, invoices, bills, receipts, inspection and quarantine certificates for imports and exports of goods, customs declaration documents, e-commerce transaction documents or transaction records, etc.;
3.The use of trademark in the media such as broadcasting, television, the Internet, publications, as well as billboards, mail advertisements, or other advertising methods to promote goods or services;
4.The use of trademark in exhibitions or fairs, including use on printed exhibition materials, word signs, badges, signs, etc.;
5.The use of trademark on legal documents or certificates issued by government agencies, inspection or appraisal agencies, and industry organizations;
6.Other forms of trademark use that comply with legal provisions.
・Forms of trademark use on services 1.The use of trademark at the places of service directly, including use on service manuals, service venue signs, store decorations, staff uniforms, posters, menus, price lists, etc.;
2.The use of trademark on transaction documents related to the service, such as invoices, remittance documents, service contracts, maintenance and repair certificates, e-commerce transactions documents or transaction records;
3.The use of trademark in the media such as broadcasting, television, the Internet, publications, as well as billboards, mail advertisements, or other advertising methods to promote goods or services;
4.The use of trademark in exhibitions or fairs, including use on printed exhibition materials, word signs, badges, signs, etc.;
5.The use of trademark on legal documents or certificates issued by government agencies, inspection or appraisal agencies, and industry organizations;
6.Other forms of trademark use that comply with legal provisions.
III. Determination of trademark use Whether the use of a registered trademark belongs to the use in the sense of the Trademark Law needs to be comprehensively judged based on the following principles and the actual situation of the registered trademark, registrant, and market.
1.The registrant shall use the approved registered trademark. The trademark can be adjusted slightly in terms of color, font, etc., but the main part and significant features of the trademark shall not be changed;
2.The registrant shall use the trademark on the approved goods. If a registered trademark is used on one approved goods, the registration on similar approved goods shall be maintained. The use of registered mark on unapproved goods, even if similar to the approved goods, cannot be considered as the use of the registered trademark;
3.If the actually used goods are not standard goods listed in the "Classification of Similar Goods and Services" but are essentially the same as the approved goods, or the goods actually used belong to the subordinate concepts of the approved goods, such use can be determined as use on the approved goods;
4.If the actually used goods are not circulated within China but are directly exported, such use can be determined as use on the specified goods.
Only publication of trademark registration, transfer, licensing, renewal, etc., without any actual use; only use in the internal field but not in the public field,; and symbolic use only for the purpose of maintaining trademark registration, etc. are not considered as trademark use under the Trademark Law.
IV. Requirements for Evidence of Trademark Use When a trademark is subject to a cancellation application based on "non-use for three consecutive years" by others, the trademark owner needs to submit evidence of use for the trademark or provide legitimate reasons for non-use to the National Intellectual Property Administration (CNIPA). The submitted evidence of use must meet the following requirements:
1.The evidence should show the trademark;
2.The evidence should show the use of the trademark on the approved goods or services;
3.The evidence should show the user of the trademark, like the trademark registrant, others licensed by the registrant or the parties who use the trademark without violating the will of the registrant;
4.The evidence should be generated within the three-year period specified in the cancellation request;
5.The evidence should be generated within the territory of mainland China.
To prove that the trademark has been commercially used within the specified period, the submitted evidence need to contain the above five elements. It does not mean that each piece of evidence should have all the five elements simultaneously. As long as the evidence on record can confirm each other and form an effective evidence chain on these five elements, it can also prove that the trademark has been genuinely, legally, and effectively used in commerce.
V. Conclusion The value of a trademark lies in its use, and the lawful and regulated use of a registered trademark is both the right and obligation of the trademark owner. Trademark owners should pay attention to the use of their trademarks and also keep evidence of such use to respond properly in case of cancellation applications.
