Article 49 of China’s Trademark Law stipulates that if a registered trademark is not used for three consecutive years, any unit or individual may apply to the Trademark Office for revocation of the registered trademark. The main purpose of this provision is to encourage trademark registrants to actively, truthfully, and legally use their registered trademarks, and to prevent the idleness of trademark resources and the waste of administrative resources.
The legal framework for trademark use in China
The relevant laws and regulations concerning the use of a trademark and trademark revocation for three consecutive years of non-use are set out below.
Article 5.2 of Chapter 17 of the Guidelines for Trademark Examination and Trial provides for the following:
The use of a trademark refers to the commercial use of the trademark. It includes the use of a trademark on goods, goods packaging, and goods transaction documents, or the use of a trademark in advertising, exhibition, and other commercial activities for the purpose of identifying the source of goods.
The evidence of trademark use provided by the trademark registrant shall be combined with the type of market entity, the actual form of business, and the trademark registration to comprehensively determine whether it is using the trademark in a real, open, and legal manner.
The trademark registrant shall use the registered trademark on the goods authorised for use. If the trademark registrant uses the registered trademark on authorised goods, the registration on goods similar to the goods may be maintained. The use of a registered trademark by a trademark registrant on similar goods other than the goods for which the trademark is authorised to be used cannot be regarded as use of the registered trademark.
If the goods actually using the disputed trademark do not belong to the standardised trade names in the Distinguished List of Similar Goods and Services, but they are only different in name from the goods authorised to be used in the disputed trademark and essentially belong to the same goods, or if the goods actually used belong to the subordinate concept of authorised goods, this can be deemed to constitute use on authorised goods.
Under Article 19.4 of the Trademark Authorisation and Right Confirmation Administrative Cases Hearing Guidelines of the Beijing Higher People’s Court, where one of the following circumstances exists, a party’s claim to maintain a trademark registration shall not be supported:
Use of the disputed trademark only on similar goods or services outside the authorised scope of use;
The use of the disputed trademark does not serve the purpose of distinguishing the source of the goods or services; or
Symbolic use to maintain the registration of the disputed trademark.
Furthermore, under Article 19.9 of the guidelines, where the trademark in dispute constitutes use on authorised goods, the registration on other authorised goods similar to the goods can be maintained.
Under Article 20 of the Opinions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Concerning Trademark Authorisation and Right Confirmation, when the Supreme People’s Court hears an administrative case involving the revocation of a registered trademark of which the use has ceased for three consecutive years, it shall, in accordance with the legislative spirit of the relevant provisions of the Trademark Law, correctly determine whether the act in question constitutes actual use.
In actual business operations, to protect their brands, trademark registrants often register trademarks in addition to the products they manufacture and sell, as well as in goods such as parts, internal components, and peripheral products. This is especially common in industrial and electronic goods, such as Class 7 mechanical goods and Class 9 electronic goods. If the trademark registrant normally sells complete products, and does not directly contract, pay, or issue invoices for the parts, internal components, etc., whether the trademark registration can be maintained in a trademark revocation case still needs to be clarified through the jurisprudence in judicial practice.
Key takeaways for trademark registrants
Trademark registrants should pay attention to marking their registered trademarks on parts, internal components, peripheral products, and other commodities as much as possible if they have registered trademarks on such commodities.
In business operations, they should also pay attention to add these parts and internal components to the product manuals, brochures, and other materials, so that consumers can easily know that they have purchased these parts and internal components at the same time, allowing them to connect the product as a whole with its registered trademark. This reduces the risk of revocation of the registered trademark.
