In recent year, China has rapidly become No. 1 country in the world in terms of trademark application filings. Consequently, with such a large volume of marks being filed, the risk of new marks facing prior marks has significantly increased. Therefore, the non-use cancellation action has become one of the effective ways to remove prior registered marks. For maintaining the marks, it is important to understand how to provide proper and qualified evidence in the non-use cancellation procedure. In this article, we will primarily focus on the "qualification" of the use evidence itself.
Examination tendency of use evidence non-use cancellation
For many years, particularly during the time when the number of trademark filings has not erupted in China, the CNIPA has been quite lenient – some would say too lenient in maintaining the marks. We see the cases that the use evidence is not qualified, or only one or two goods are used, but the entire mark is maintained by CNIPA.
This practice, however, has changed recently. We found that the CNIPA adopts more strict examination rule in the non-use cancellation actions. Unlike before, the CNIPA now would provide a detailed list of the evidence submitted by the registrant and comment on whether the use evidence is qualified. Based on this evaluation, the CNIPA would then decide whether to partially or fully maintain the mark.
This new tendency shows that having a large volume of marks in China, for better achieving the mark's value – identifying the origin of goods of services, the CNIPA is eager to remove the non-used mark from CNIPA. If the registrants have not used the marks in the market, consequently, this mark also will not achieve the value and then this mark should be cancelled, leaving the "seat" to the actual used registrant. Therefore, the CNIPA adopts stricter rule of examining the use evidence, aiming to cancel the non-used mark.
Information should be showed in the evidence
All below information should be showed on the use evidence.
1. Time
The use evidence should fall under the prescribed time, namely within three years prior to the application date of non-use cancellation action is filed.
2. The registrant's name
The registrant's name should be same as the one recorded under the mark.
3. The designated goods and services
The use evidence should be about designated goods and services of the mark.
4. Mark.
The mark should be same as the one registered before CNIPA.
Complete Use Evidence Chain
When providing the use evidence, the applicant often mistakenly believes that they have submitted a substantial amount of evidence. However, the CNIPA still cancels their marks. Similarly, in their communication with attorneys, they are frequently asked to provide additional evidence of use. The issue lies in the fact that although the applicants may be using the mark, they fail to provide proper and qualified evidence of such use. We frequently see that foreign applicants tend to provide sales data in the form of Word or Excel files, accompanied by images of their actual products to demonstrate their usage in China. However, without additional supporting materials, this type of evidence is easily perceived as self-made and is not deemed as valid. The CNIPA follows strict rule regarding the use evidence during the non-use cancellation stage. Therefore, in order to let the CNIPA accepts the evidence and maintain the mark, we should submit the complete evidence chain.
Taking the sales evidence as an example, assuming all the use evidence has contained above required information, it is not sufficient to maintain the mark only relying on self-made selling data or/and products' pictures. The qualified use evidence should be corresponding contract, invoices, pictures of the actual products, bills of landing, bank records, customs Import/Export receipts, etc.. You could see that such evidence shows the seller and buyer and the goods bearing the mark are being sold in the market proved by the third reliable companies or bank, forming a complete evidence chain to demonstrate the actual use of the mark over the designated goods. If the registrant could provide such complete evidence chain, no doubt, their mark will be maintained in the non-use cancellation action.
In addition, we often see that the client continuously provides the same type of the use evidence only relating to one or two designated goods/services of a mark. As a result, only same and similar goods in the same subclass are maintained but rest of the goods or services are cancelled. You may know that the CNIPA usually rigidly follow the Chinese Classification system under the current practice, namely if the specific goods/services are maintained, it means that the goods/services in same subclasses will be considered as similar goods/services and all these goods/services in the same subclass will be maintained, but the goods/services in different subclasses will be canceled. Thus, when submitting the use evidence, it is suggested that the registrants do not only provide the use evidence for one specific goods, but, they should provide the use evidence for at least one goods in each subclasses, so that the entire mark could be maintained.
In conclusion, it is not a large amount of use evidence will be taken for granted to maintain the mark, while it is about provide a complete evidence chain and provide use evidence for at least one good in each subclass to maintain the mark.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
