Notice on evidence in cancellation for non-use actions issued

For a few months now trademark holders defending cancellation applications based on non-use have received a notice regarding providing evidence of trademark use, printed on the back of the Circular of Providing Evidence of Use of Registered Trademark. The notice describes the particular requirements, and the content and form of evidence necessary to show use of a registered trademark.

According to provisions in the Trademark Law and Regulations for the Implementation of the Trademark Law of China, if a registered trademark is not used for three consecutive years, anyone may apply to the Trademark Office for cancellation of the trademark. After receiving an application for cancellation, the Trademark Office shall give the circular to the registrant, requiring it to submit evidence of use before the filing of the cancellation application or to provide a reasonable explanation for non-use. The registrant must respond within two months from the date of receiving the circular and the Trademark Office shall then decide whether to cancel the trademark.

However, neither the Trademark Law nor the regulations specifically define the phrases 'use of the registered trademark' and 'content and form of evidence of use of the registered trademark'. This lack of guidance makes it difficult for trademark registrants and agents to provide valid and accurate evidence acceptable to the Trademark Office timely. This deficiency can cause inconvenience and increased costs for trademark registrants due to the subsequent consultation and supplementation of evidence.

To rectify this situation, the Trademark Office has explicitly defined the 'use' of a registered trademark in the notice to mean 'use on goods, packaging of goods and the transactional documents related to goods, or use in advertising, exhibitions and other commercial activities'; however, "the release of trademark registration information shall not be deemed to be use of the trademark in commercial activities". Therefore, the evidence provided by a trademark registrant or agent must be sufficient to prove that there is use within the definition and within the alleged period of non-use.

At the same time, the notice categorizes "force majeure", "non-use due to restriction of state policies" and "non-use due to bankruptcy and liquidation" as "the circumstances of reasonable non-use" that do not give rise to "three consecutive years of non-use".

In addition, the notice contains detailed provisions on the required form for evidence, such as the form in case the original evidence is not available, the specific form for computer data, recorded audio and video materials or written testimony used as evidence.

It is worth noting that under the notice, trademark licensing agreements, sales or service agreements and written testimony as evidence of trademark use are of themselves not to be accepted without other valid evidence.

The notice clarified the fact that trademark use is not limited to use by the trademark registrant but that evidence of use by the licensee is also deemed to be evidence that the trademark has been used.

The notice, to a certain extent, clarifies what use of a trademark means as well as the content and the required form of relevant evidence of use. This provides more guidance for trademark registrants when third parties apply to cancel the trademark on the basis of non-use for three consecutive years. However, the notice is merely a procedural regulation by an administrative entity and is not a piece of legislation; therefore it is not binding on the judiciary.

The Trademark Office is already considering making some improvements to the notice.

Horace Lam and Stacy Yuan, Lovells, Beijing