Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
Common Issues in Providing Evidence of Use for a Trademark
Erica LI
Trademark Attorney
Trademark Department
Welcome to Linda Liu & Partners on air！
My name is Erica LI. I’m a trademark attorney from the trademark department in Linda Liu & Partners. It’s my great honour to share with you some useful tips for trademark issues.
Whether it is in trademark applications or dispute cases, situations may arise that the China IP Office requires to submit evidence of use for a trademark. Especially for defending a non-use cancellation, it is extremely important for the registrant to guarantee that the evidence of use submitted is suitable, or the trademark will be cancelled.
According to the Chinese Trademark Law, if a registered trademark has not been put in use for three consecutive years without a justifiable reason, any entity or individual may apply to the trademark office for cancelation.
What are the issues that registrants need to pay attention to when preparing evidence of use for a trademark?
The first is that the evidence must show the trademark, goods/services as well as the time when the evidence was formed. These are the essential factors, but they are also easy to ignore:
For the specimen shown in the evidence, it should be in principle consistent with the registered trademark. If a mark is combined with device and word elements, it should show both elements in use, unless there is a disability to display the device. It may not be deemed as an effective use of the trademark, if the evidence only reflects the device or the word.
Similarly, the goods/services in the evidence of use should be covered by those approved. In practice, it is a common phenomenon that the evidence only consists of a trademark but no goods or services, e.g. the advertisement that only shows the trademark name or the license agreement of the trademark without indicating any goods/services. This evidence alone may not be admitted as effective evidence of use.
In regard to the duration of time of non-use cancellation, it is necessary to submit evidence for use within the specified three years; otherwise, it can only be supportive.
Secondly, the document needs to form a complete evidence chain. To prove whether a trademark is actually used in business, a single form of evidence is not enough. Taking sales evidence as an example, contracts or bills alone are insufficient to prove that the products bearing the trademark have been sold to the Chinese consumers. In order to prove genuine and effective sales, it requires the mutual confirmation of the sales contracts, bills, invoices, bank transfer records, commodity declarations, transportation records, the Customs documents, and other materials.
Thirdly, the evidence needs to reflect the actual open commercial use of the trademark. The most important function of a trademark is to distinguish the origin of goods/services. It is necessary for the trademark to appear in the public's field of vision in order to recognize the trademark from other marks. Internal use as well as transferring or licensing without actual use cannot be deemed as valid.
Fourthly, for service marks, the evidence of use needs to reflect the services provided “for others”. For companies that produce physical goods, when applying for trademark registration, they easily conflate advertising and marketing for their own products with the services in class 35. In fact, the service mark refers to providing services to others, through which to obtain commercial income. Therefore, it is difficult to maintain the registration of service trademarks by submitting such internal work as evidence of use.
Fifthly, evidence of use needs to be formed in mainland China, but not in other regions. Submission by the trademark owners formed in Hong Kong, Taiwan, Macau and other regions are generally not considered to be valid, since these areas are in different jurisdictions than mainland China.
In administrative and judicial procedures, the use of trademarks is an important factor for review by referees, and the use of trademarks must be reflected through evidence. Therefore, enterprises not only need to establish a sound trademark management system, but also need to pay attention to the preservation of evidence in commercial activities, so as to be prepared and ensure the smooth implementation of brand strategies.
We hope the above suggestions are useful to you. And if you would like more discussions about this topic, you can find me via our email address: trademark@lindapatent.com.
As a leading IP law firm in China, we are always glad to help.
