Proof of use in cancellation actions clarified
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The Chinese Trademark Office has laid down specific examples of evidence of use that a registered trademark owner can provide to defend successfully against an action for the cancellation of the mark on the grounds of non-use for a period of three years.
For product marks, the evidence can consist of use of the mark:
- on the product itself or on its container, packaging, label, additional tag, instruction manual or user handbook;
- on commercial documents relating to the product, including the sales agreement, invoice, receipt, bill, import or export certificate of inspection or quarantine or customs declaration; or
- in advertising or promotional activities relating to the product, such as in radio or television broadcasts, printed publications approved by the Department for Publication Administration of the State Council, advertising billboards, mail advertisements, or government-approved exhibitions or expositions.
Evidence to show use of a service mark can include use of the mark on:
- a service manual;
- a sign board, sign or decoration;
- a menu (for restaurant services) or price list;
- a registration certificate for provision of the services; and
- a coupon, stationery, invoice, agreement for provision of the services, remittance voucher or invoice.
The Trademark Office considers the following reasons for non-use of the mark to be valid:
- force majeure;
- government restrictions;
- liquidation or bankruptcy of the trademark owner; and
- other circumstances where the trademark owner cannot use the mark.
Mena Lo, Wilkinson & Grist, Hong Kong
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