How to organize evidence of trademark use to defend a non-use cancellation in China?

Written by Dr. Jian Xu, IP Expert and collaborator of the China IP SME Helpdesk

After a trademark is registered for 3 years in China, any party can file a non-use cancellation against the registered trademark. The registrant will then need to provide evidence of trademark use in the last 3 years (counting backward from the date of the non-use cancellation action filed).

The level of trademark use required must be sufficient for the authority to believe there are genuine and credible commercial activities involving the trademark. Therefore, token use does not meet the standard, while on the other hand, the standard is not so high as to require a substantial amount of use. The level of minimum use lies somewhere in the middle.

In practice, the key to assembling an effective portfolio of trademark use evidence is to have evidence from diverse sources and categories which form a coherent chain to show continuous and credible commercial activity.

Diverse sources: To illustrate this point, it's better to have three small invoices for three different Chinese customers, than to have only one bigger invoice from a single Chinese customer.

Diverse categories: It's better to have the trademark (1) showing on the website somewhere; (2) appearing on commercial documents such as T&Cs, invoices, sales contracts, shipping documents, customs declarations, etc.; and (3) featuring in marketing and advertising media such as fashion magazines and trade shows.

Coherent chain: It's better to preserve the complete paper trail of at least one or two commercial transactions. For example, a complete sales process might include documents like client queries, product orders, sales contracts, relevant invoices, shipping documents, and product brochures.

Continuous commerce: It's better to provide evidence of use within each year of the last three years, than to concentrate your evidence of use in a particular year or time period. The key here is to show that commercial activities are continuous and ongoing.

Credible commerce: Invoices are particularly important for showing trademark use. China operates the official invoice system (the so-called "Fapiao"), which are government-issued and publicly verifiable invoices. They are thus the best invoice format if such Fapiao can be provided. However, invoices outside China by foreign right holders are usually homemade, unlike the Chinese Fapiao. Thus it is better to get a few invoices notarized to address the Chinese examiner's concerns about not being able to verify or trust the truthfulness of a foreign invoice.

This article is an excerpt from my E-book, '365 Intellectual Property Tips for China: A Comprehensive, Strategic, and Practical Guide for Legal Professionals' available on Amazon. You are welcome to check it out (and read it for free if you are a Kindle Unlimited subscriber).