Providing evidence to prevent cancelling of a trademark through the three years of non-use provision

2016-08-26
BORSAM IP
BORSAM IP  ————————————————
Providing evidence to prevent cancelling of a trademark through the three years of non-use provision


How can you provide evidence of the three years of non-use of a trademark in order to prevent a trademark being cancelled? What evidence do you need? And what should you be aware of when providing such evidence?
 
According to the provisions of Chinese trademark law, if a trademark has not been used continuously for three years, another person or entity may file to have this trademark cancelled. The trademark office would then send a notification to ask the trademark holder to respond and amend within a limited timeframe. The defendant must provide evidence with their response and prove that it has been used within the timeframe.

What evidence do you need, and how can it be presented?

The evidence could be an agreement, brochure/advertisement; invoice or anything else dated which could serve to prove that you had used the trademark within the past 3 years (**note – 3 years from the date the request was filed). If the trademark was registered in separate classes, you must provide evidence of use across all of the classes. If not, it can only be proved that you have used the trademark in the classes where the evidence has been accepted, and the trademark in the remaining classes would be cancelled. You must collect and respond to the trademark office within 2 months, or else file a legitimate reason for non-use of the trademark. The following reasons are considered acceptable:

1.   Force majeure;

2.   Stopped using because of national policy;

3.   Stopped using because bankruptcy/liquidation; and

4.  Other reasons that may be considered acceptable by the trademark office

When filing the evidence, you must be aware:

1.  Original evidence carries much more weight than its copies. For example, agreements with a business partner relating to the trademark would be much better in the original and with the seal

2.   The brochure or advertisement with your trademark on it can prove that the trademark was used within the last 3 years, and is particularly helpful if it includes the designated classes of the registered trademark. It is also helpful if the costs incurred by advertising, invoices sent by the printer, publication name, publishing house, the publishing time and anything else similar are available to strengthen the chain of evidence.

3.   If a commercial voucher, it must be the original and not the one used inside of your company or any partner companies

4.   Some official documents carry more weight than others – keep this in mind.