Published on January 13, 2022

After the trademark is registered, it is required to put the trademark in genuine use within three years from the date of registration. Although it is not required by the Trademark Law to submit evidence of use every few years, upon expiration of 3rd year after registration, if anyone initiates non-use cancellation proceedings, the trademark holder is obliged to submit evidence of use in connection with the goods and services identified in a trademark registration [1]. What’s more, in the infringement litigation, the trademark holder is required to provide evidence of use within the past three years. If the applicant fails to provide such evidence, damages due to trademark infringement will not be granted by the court to the trademark holder [2]. Therefore, once the trademark is registered, it is very important to keep the evidence in the course of trademark use.

In the recently released Trademark Examination and Trial Guideline (released in November 2021 and implemented since January 1, 2022), detailed requirements and case law for evidence of trademark use are provided [3].

I. Detailed requirement

1. Time requirement
Three years before the date of the petition for non-use cancellation.

2. Definition of trademark use
Trademark use means the use of the registered trademark in the course of trade, including trademark use on products, packages/containers, and transaction documents, or trademark use on advertisements, trade shows, or any other commercial activities for the purpose of indicating the origin of goods/services

3. Goods and services
Evidence of trademark use should be connected to the designated goods or services of the registered mark. Providing evidence of use for one goods or service would lead to maintenance of trademark registration for the same and similar goods or services. In another word, evidence only for one goods or service will not keep the dissimilar goods or services alive.

4. Non-acceptable evidence of trademark use
a. Trademark Official Gazette or any official announcement of trademark registration
b. Trademark use not in a public business context
c. Major part or distinctive characteristic of the trademark has been altered and used
d. Trademark assignment or licensing activity
e. Token use for the pure purpose of maintaining registration

5. Acceptable evidence of use
5A. Trademark for designated goods
a. Trademark attached, carved, stamped, printed, or weaved on commodity, package, container, label, etc., or use on the product tag, description, guidebook, fee sheet, etc.
b. Trademark use on trade documents related to product sales, including sales contract, invoice, receipt, import and export inspection and quarantine document, customs declaration document, transaction record or receipt of e-business, etc.
c. Trademark use on media such as radio, TV or internet, or any public publication.
d. Trademark use on trade shows and exhibitions, such as printed material, badge, indication board, booth background design etc., serving the purpose of indicating the origin of goods or services.
e. Trademark appeared on the legal document and certificate document issued by the national authority, testing institute, or expertise institute.
f. Other trademark use that meets the legal requirement.

5B. Trademark for designated services
a. Trademark directly use at the place of service, such as pamphlet, shop sign, shop decoration, staff uniform, label, menu, fee sheet, coupon, stationery, letter paper, and items related to designated service.
b. Trademark use on documents related to services such as invoice, receipt, agreement, warranty, and receipt or transaction record of e-commerce.
c. Trademark use on media such as radio, TV, or internet, or any public publication; advertisement promotion in the form of advertisement sign, direct mail or other means of advertisement.
d. Trademark use on trade shows and exhibitions, such as printed material, badge, indication board, booth background design, etc., serving the purpose of indicating the origin of goods or services.
e. Other trademark use that meets the legal requirement.

6. Requirement of evidence of use
The evidence should reflect
a. graphic representation of the subject trademark;
b. trademark use on designated goods or services;
c. the trademark owner or licensee as the trademark user;
d. the date of use (within three years before the petition date of non-use cancellation), and
e. that the trademark has been used within the territory of mainland China.

7. Insufficient evidence
The following evidence would be deeded as insufficient evidence of use and thus cannot prove trademark use alone without other evidence:
a. Sales contract of goods or agreement/contract of services;
b. Written testimony;
c. Evidence (Physical evidence, video, internet information) that fails to prove it has never been fabricated or changed;
d. Physical item and replica.

8. Evidence of use of the product for exportation only
If the goods are for exportation only and do not sell in China, with sufficient evidence of order, transaction, customs clearance, and shipment, such use will be recognized as genuine use in China.

II. Case studies
Case I
The subject trademark is “PHILLIPS” designating the goods “metal support”.
The trademark owner submitted the following evidence:
a. The sales contract among the trademark owner, company A and company B. The trademark logo “PHILLIPS” and the product name “metal support” are indicated on the contract. The contract was entered within the 3 years before the date of the non-use cancellation petition.
b. Official VAT (Value-added Tax) invoice
Product name, the volume of product, and amount on the official VAT (Value-added Tax) invoice correspond with the sales contract above, proving that the contract has been carried out.
The trademark in the sales contract is identical to the trademark in the trademark registration. The product name indicated in the sales contract and Official VAT invoice is identical to the designated goods of the trademark registration. What’s more, the information in the sales contract corresponds to the information on the official VAT invoice, proving that the contract and related transaction have been carried out and the trademark has been used in the course. It was decided by the Trademark Review and Adjudication Board (hereafter referred as ‘TRAB’) that the use of the mark “PHILLIPS” was established within the past three years before the date of the petition for non-use cancellation.

Case 2
The trademark at issue is “一丸土（pronounced as ‘Yi Wan Tu’）” designating the goods “tea set, teapot etc. ”.
The trademark owner submitted the following evidence:
a. Trademark licensing document;
b. Screenshot of the home page of online shop “一丸土（pronounced as ‘Yi Wan Tu’）Studio” in the online marketplace “Taobao.com”;
c. Certification document of the online shop owner ;
d. Transaction record;
e. Photo of Red Stoneware Teapot package;
f. Wechat conversation record in the course of the purchase of the Red Stoneware cup.
The mark indicated as the online shop name and appeared on the product package is identical to the mark in the trademark registration. However, the products offer for sales in the shop are Red Stoneware Teapot and Red Stoneware cup. The product name is not identical to the designated goods “tea set and teapot” of the trademark registration. Since Red Stoneware Teapot and Red Stoneware cup should be deemed as a subcategory of tea set and teapot, the mark “一丸土（pronounced as ‘Yi Wan Tu’）” was decided to have been used within the past three years before the date of the petition for the non-use cancellation.

Case 3
The trademark at issue is “宜派（pronounced as ‘Yi Pai’） ipai” designating the goods “automotive ”.
The trademark owner submitted the following evidence:
Three VAT invoice (invoice A, B and C)
VAT invoice A: The product name and amount indicated on the invoice is different from the search result of the national VAT invoice database
VAT invoice B and C: Invoice B and invoice C returned no search result in the national VAT invoice database
The evidence submitted was questionable and therefore the evidence was not admitted. The mark “宜派（pronounced as ‘Yi Pai’） ipai” was decided to be canceled.

Case 4
The trademark at issue is “DAQIAO”.
The trademark owner submits the following evidence:
1. Transaction record
2. Advertisement evidence
Although there is sales activity related to the trademark, the amount of transaction is only CNY 1800 (about USD 308). There is only one advertisement campaign with a narrowly covering media “Huzhou Daily”. Therefore, such trademark use should be deemed as token use instead of genuine trademark use.

III. Takeaways
Trademark holders should preserve the evidence of use well for the preparation of non-use cancellation challenges. Here are some takeaways for trademark holders

1. Only evidence of use within mainland China (not in Hong Kong, Macau or Taiwan) would be deemed as acceptable evidence
2. If trademark registration designates a number of goods/services, evidence of use should be preserved at least for one goods/services in each group of similar goods/services.
3. Graphical representation of the trademark, registration number of the trademark, product name, volume of product and amount are suggested to be included in the contract. Such information should be sufficiently correspondent to the product name, volume of product and amount in the official VAT invoice. The seal and signature of both parties should appear on the contract and the VAT invoice should be an official invoice issued by the Chinese authority searchable in the national VAT invoice database Internal generated documents such as order form and receipt will not be accepted as sufficient evidence.
4. Evidence of trademark use in business promotion activities (such as trade show, advertisement and TV commercial) should also be preserved well.
5. There is no specific requirement on the threshold of product sales volume, amount, and frequency of advertisement/commercial to establish genuine use. Whether certain volume and amount would be sufficient would be judged case by case considering all relevant factors such as nature of business, industry category, influence of media etc. Sufficient evidence of use should be provided to avoid being decided as token use of the trademark.

[1] Trademark Law of P. R. China (Amended in 2019), Article 49
[2] Trademark Law of P. R. China (Amended in 2019), Article 64
[3] Trademark Examination and Trial Guideline (2021), Page 367