On August 13, 2018, the China Trademark Office (CTMO) released an interpretative document that described its requirements on submission of use evidence, called Relevant Explanation on Submitting Trademark Use Evidence (the Explanation). The Explanation shed some light what forms or formats of use evidence are acceptable to the CTMO and what
1. Trademark use evidence related to goods
The following methods are considered acceptable in terms of using trademarks on goods
- Attach the trademark to the product, product packaging, container, label, etc. by direct attachment, engraving, branding or weaving, or use it on the product additional label, product manual, instruction manual, price list, etc.;
- Trademarks are used in transaction documents linked to the sale of goods, including use in commodity sales contracts, invoices, bills, receipts, imp/exp inspection and quarantine certificates, customs declaration documents, etc.;
- Trademarks are used on media such as radio, television, or in publicly distributed publications, as well as advertisements for trademarks or trademarks using billboards, postal advertisements, or other advertising methods;
- Trademarks are used in exhibitions and fairs, including printed materials and other materials provided at exhibitions and fairs;
- Other forms of trademark use in compliance with the law. This is a catch-all clause but
is rarely used unless it is triggered under some exceptional circumstances by the CTMO.
2. Trademark use evidence related to services
- Trademarks are used directly at the service location, including introductory manuals for service, signage for service venues, store decoration, staff clothing, posters, menus, price lists, lotteries, office stationery, letterheads, and other items related to designated services;
- Trademarks are used on documents related to services, such as invoices, remittance documents, service agreements, maintenance and repair certificates, etc.;
- Trademarks are used on media such as radio or television
or published in publicly traded publications, and advertising for trademarks or trademarks using billboards, postal advertisements, or other advertising methods; - Trademarks are used in exhibitions and fairs, including printed materials and other materials used in exhibitions and exhibitions;
- Other forms of trademark use that comply with the law. Again, this clause is just a catch-all one which may rarely be used.
3. Uses that are not considered to be trademark use in the sense of the Trademark Law.
The following usages of a mark are not considered as trademark use in the eyes of the CTMO. Any evidence might not support proof of using the marks. However, those pieces of evidence may be used to prove that facts, such as existing of certain marks.
- The publication of the trademark registration information or the statement of the trademark registrant that it has exclusive rights to its registered trademark;
- Not used in the public commercial sector;
- Used only on a gift;
- Only transfer of trademark ownership or license to use the trademark, but without actual use;
- Symbolic or nominal use for the sole purpose of maintaining trademark registration.
4. Submitting only the following evidence is not considered a trademark use in the sense of the Trademark Law
Submitting the following single evidence only and without additional evidence will not be considered as a trademark use in the sense of the Trademark Law. The Explanation simply stated that a fact cannot be proved by submitting the following evidence only. Nevertheless, if there is other evidence accompanying the following evidence or there are multiple stacks of the following evidence, the following evidence still should be submitted.
- a contract for the sale of goods or an agreement or contract for the provision of services;
- Written testimony or affidavit;
- Physical evidence, audio-visual materials, website information and etc. which is difficult to check whether they have been modified;
- Physical goods and replica.
5. Excusable non-use
If the trademark is not used due to the following reasons, the trademark owners may be immune from a cancellation petition based on non-use. The trademark owners will have the burden to prove the factual reasons for non-use.
- Force majeure;
- Government policy restrictions. A good example would be Google in the service of
internet search engine; - Bankruptcy or liquidation;
- Other matters that cannot be attributed to the trademark registrant.
Conclusion
The Explanation provides some useful guidance on evidence collection and submission. This guideline is extremely valuable in preparing lots of inter partes or even ex parte proceedings.
