AFD Case Study – Strategy on Providing Use Evidence against Three Year Non-use Registration Cancellation
Article 49(2) of the Trademark Law of China provides that where a registered trademark has not been used for an uninterrupted period of three years without justified reasons, any entity or individual may request the Trademark Office to cancel the registered trademark (hereinafter referred to as “non-use cancellation”).
Pursuant to Rule 66 of the Implementing Regulations of the Trademark Law, in the non-use cancellation proceedings against a registered trademark, the burden of proof is on the trademark registrant.
In practice, the non-use cancellation generally includes two types: cancellation of a trademark on all designated goods/services; and cancellation of a trademark on some of the designated goods/services. For these two types of non-use cancellation, there are differences in the requirements on the evidence of trademark use. Proper and adequate preparation of applicable evidence can help trademark registrants strive for better examination results. Here, through a small case, we will show you how to properly prepare evidence on trademark use for cancellation of a trademark on all designated goods/services.
A renowned Austrian winter sportswear company (“trademark registrant”) obtained protection in China for their trademark (“disputed mark”) on the goods in Class 18, Class 25 and Class 28 by territorial extension of their international registration under the Madrid Protocol.
On January 10, 2021, the trademark registrant received from the CNIPA a Notification of Providing Evidence on Trademark Use, which informed that on October 14, 2020, a Chinese individual filed a request for cancellation of the disputed mark on all designated goods in Class 25 on the grounds of three-year non-use, and therefore the trademark registrant was required to provide evidence about the use of the disputed mark on all designated goods in Class 25 for the period from October 14, 2017 to October 13, 2020.
The designated goods in Class 25 for the disputed mark were: “Sportswear, especially clothing for skiing and sledging; sports shoes, especially boots for skiing and sledging; sports gloves, especially gloves for skiing and sledging”. During our communication with the trademark registrant, the trademark registrant confirmed that during the above specified period they indeed carried out the sale and promotion of "ski boots" products bearing the disputed mark in China through an authorized third party.
After a comprehensive consideration of the relevant information provided by the trademark registrant, we suggested they provide the following evidence:
1. authorization documents about authorizing another party to use the disputed mark on the designated goods or goods similar to the designated goods;
2. evidence about the authorized party’s preparation work for using the disputed mark;
3. evidence about the authorized party’s actual use of the disputed mark, such as sale contracts, sale invoices, online and offline advertising and promotion materials, online and offline sales evidence;
4. other evidence about the authorized party’s actual use of the disputed mark during the specified period.
On February 10, 2021, the trademark registrant filed the following evidence with the CNIPA, proving the use of the disputed mark on the “ski boots” products for the specified period:
1. a statement made by the trademark registrant’s parent company on authorizing a Chinese sports equipment company (“licensee”) to sell their core brand products, i.e. ski boots (for proving that the licensee had legal authorization to sell the designated goods bearing the disputed mark in Mainland China);
2. consignment contracts signed by and between the licensee and the distributors regarding the sale of the ski boots (for proving that the licensee made sufficient and necessary preparation for using the disputed mark);
3. Taobao webpages showing the licensee’s sale of the goods bearing the disputed mark and showing the description of the relevant ski boots (proving that the licensee not only signed consignment contracts with third party distributors for the promotion of the ski boots, but also retailed the ski boots through the Taobao online platform).
The CNIPA determined the above evidence to be valid evidence of the trademark registrant’s use of the disputed mark on ski boots during the specified period, and thus decided to uphold the registration of the disputed mark on all designated goods.
The legislative purpose of Article 49 of the Trademark Law is to urge trademark registrants to legally and validly use trademarks, which objectively plays a role in removing non-used trademarks, curbing malicious registration, and maintaining the order of fair competition.
In practice, when facing a request for non-use cancellation of trademarks on all designated goods, if the trademark registrants are unable to provide evidence of use of the trademarks on all designated goods, they may submit sufficient evidence of use of the trademarks on one or more of the designated goods, so as to maintain the registration of the trademarks on all designated goods
In this case, although the trademark registrant failed to submit the evidence of use of the disputed mark on all designated goods for the specified period, the evidence materials submitted by the trademark formed a preliminary chain of evidence about the use of the disputed mark on "ski boots", and thus the CNIPA finally decided to uphold the registration of the disputed mark on all designated goods.
We hope that the above information will be helpful for your preparation of trademark use evidence and defence strategy against non-use cancellation.
Should you have any questions, please do not hesitate to contact us.