Generally, the reasons for a trademark being revoked are as follows: 1. The trademark hasn’t been used for three consecutive years (with no legitimate reasons); 2. Registering trademark in bad faith; 3. Improper use of trademark; 4. Failure of renewal when trademark expires. This article is to discuss the common questions about trademark cancellation due to non-use for three consecutive years (hereinafter referred to as “trademark cancellation”). How come the trademark still cancelled even though extensive evidence of use is provided during the “cancellation three” defense process? |
Article 49 of the
Trademark Law stipulates that where a registered trademark has become the generic name in the trade of the goods in respect of which it is used, or where it has not been used for consecutive three years without legitimate reasons, any organization or individual may apply to the Trademark Office for the cancellation of the registered trademark.
This provision aims to encourage and urge trademark registrants to actively and regularly use their registered trademarks by clearing up unused trademarks on the market, thus maintaining the credibility of trademarks and preventing the abuse of exclusive rights of registered trademarks for illegitimate gains.
A. How to Provide Effective Evidence of Use in Response to Trademark Cancellation
When a registered trademark is subject to cancellation, the Trademark Office will send a “Notice on Providing Evidence of Use of Registered Trademark” to the trademark registrant after accepting the case. The notice will specify that, if there is no legitimate reason (please refer to Article 67 of the Implementing Regulations of the Trademark Law), the trademark registrant needs to provide evidence of use of the cancelled trademark for the goods or services designated for use within the past three years, and submit it within 2 months from the date of receiving the notice. Otherwise, the trademark will be cancelled.
Based on WEIPR’s years of experience in responding to trademark cancellations, when receiving the “Notice on Providing Evidence of Use of Registered Trademark”, do not panic. You can prepare evidence materials from the following aspects:
1. Evidence that can show the disputed trademark being used;
2. Evidence that can show the disputed trademark being used on the specified goods or services;
3. Evidence that can show the user of the disputed trademark, including the trademark registrant itself, as well as others authorized by the trademark registrant and other persons who use the trademark without violating the will of the trademark owner. If others are authorized to use it, the existence of the authorized use relationship should be proven;
4. Evidence that can show the date of use of the disputed trademark;
5. Evidence that can prove the use of the disputed trademark within the territorial scope of the Trademark Law;
6. Evidence that can prove that the disputed trademark is used openly, truthfully, commercially, and legally.
B. The following evidence alone shall not be deemed as trademark use in the sense of trademark law:
1. Commodity sales contracts or service agreements, contracts;
2. Written testimony;
3. Physical evidence, audio-visual materials, website information, etc. that are difficult to identify whether they have been modified;
4. Actual goods and replicas.
C. Typical Case
1. Case No. 3420089 (Category 33) “养生之道” Trademark Cancellation
Overview:
The “Nanchang District Huaqi Brothers Department Store” filed an application on August 12, 2010, to cancel the trademark “养生之道” with the registration number of “3420089”. After undergoing the process of review, prosecution, appeal, etc., the trademark was still cancelled. According to the second instance administrative judgment announced by the Trademark Office, the trademark owner “Fang Xiaorong” provided the following main evidence:
1. Copy of the business license and brief introduction of Shanghai “Yangshengzhidao” Enterprise;
2. Copy of Fang Xiaorong’s copyright certificate;
3. Copy of the trademark license agreement;
4. Originals and copies of relevant cooperation, entrusted processing agreements, and invoices;
5. Copies of product photos and invoices of “养生之道”;
6. Copy of the certificate and related materials issued by Sun Fuyuan;
7. During the original trial of this case, Fang Xiaorong submitted materials such as the usage status and evidence chain of the registered trademark “养生之道” in Category 33 to the original court;
8. During the second instance, the parties submitted an original invoice bookkeeping voucher and several email screenshots as additional evidence.
The court held:
The copyright registration certificate submitted by Fang Xiaorong can only prove the relevant rights of copyright, which is unrelated to the exclusive right of the disputed trademark. The trademark license agreement, without other evidence to support it, cannot prove that the goods using the disputed trademark have actually been circulated in the market. The entrusted processing and manufacturing agreement and related invoices are not within the specified period. The product photos of “养生之道” and the certificate issued by Sun Fuyuan are unilaterally issued. Although the parties submitted an original invoice bookkeeping voucher for the cooperation agreement and invoice signed between Shanghai Yangshengzhidao Enterprise and Shanghai Sanlintang Catering Management Co., Ltd., the sales’ quantity and amount involved in this sales behavior are extremely small, and it cannot prove the party’s true intention of use for maintaining the symbolic use of trademark registration. Regarding the emails, the court cannot confirm their authenticity, and the content of the emails cannot prove the actual circulation of the disputed trademark. In summary, the evidence submitted by Fang Xiaorong is insufficient to prove that the disputed trademark has been publicly, legally, truthfully, and effectively used on the approved goods during the specified period.
2. Successful Representation of an Individual in a Trademark Cancellation Defense
Overview:
Based on Article 49 of the Trademark Law of the People’s Republic of China, a hotpot restaurant in Zhuhai City applied to the Trademark Office to cancel the registration of a trademark in Category 43, including “restaurant” and all other approved services, citing the reason of not using the trademark for three consecutive years.
After receiving the “Notification on Providing Evidence of Use of Registered Trademark”, the client sought WEIPR for representation in the trademark cancellation defense and expressed that the available evidence of use was limited. However, the trademark was very important to him, and he hoped that WEIPR could help him retain the trademark. WEIPR expressed understanding that compared to trademarks registered in the name of a company, trademarks registered by individuals often cannot be comprehensively used in subsequent processes.
Based on the initial evidence provided by the client, WEIPR conducted a detailed analysis with the client: first, the basic information and exterior photos of the restaurant could not prove actual use; second, the few purchase and sales orders alone did not constitute a complete evidence chain; third, there was no proof of the duration of the trademark’s use. During our communication, we learned that the client had registered an online platform service and promptly reminded the client to provide relevant evidence of use through the online platform, including the purchase of ingredients through the online store and delivery services provided by Meituan. With our assistance in organizing the evidence, the client subsequently supplemented the evidence of the trademark’s use in Category 43, as follows:
1. The sole proprietorship business license and food operation permit of the respondent;
2. Courier receipts for customized restaurant signboards and order records for related products purchased on Taobao;
3. Photographs of the respondent’s restaurant;
4. Receipts and transfer records for the respondent’s purchase of ingredients;
5. Receipts for the respondent’s sales orders;
6. Payment records for the respondent’s sales;
7. The respondent’s registration information on the Meituan platform;
8. Transfer records for the respondent’s withdrawals from the Meituan platform.
Evidence 1 proves that the respondent has actually registered a restaurant and obtained a food operation permit; Evidence 2 and 3 prove that the respondent’s restaurant has been officially established; Evidence 4 proves that the respondent purchased relevant ingredients for operating the restaurant; Evidence 5 and 6 prove that the respondent sold ingredients through online group-buying platforms; Evidence 7 and 8 prove that the respondent provided delivery services through the Meituan online platform.
The above evidence demonstrates the disputed trademark and its usage timeline, forming a complete evidence chain from obtaining the food operation permit, restaurant establishment, ingredient purchase, ingredient sales, to providing delivery services. The transfer records during the specified period proves that the respondent has used the disputed trademark in approved services such as “restaurant” and similar services, maintaining its registration while cancelling its registration in other non-similar services. The attached figure shows the decision regarding the cancellation application due to not using the trademark for three consecutive years. Upon receiving the decision, the client expressed gratitude for WEIPR’s professional assistance in successfully completing the cancellation defense.
D. Conclusion
In summary, the author hereby advise all readers to retain evidence of trademark use in daily operations, and pay attention to the following points when retaining evidence:
1. The daily use of trademarks should be standardized and kept consistent with the trademark sample on the registration certificate as much as possible;
2. Use should be made on the approved registered goods/services as much as possible;
3. Evidence materials that can be retained as original copies in daily use must be kept;
4. The evidence of use of trademark needs to form a complete evidence chain that can prove the three elements of usage time, trademark logo, and goods used simultaneously;
5. The use of trademarks is not limited to the use by the trademark registrant, and the use by the licensee can also be considered as effective use of the trademark.
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