New Regulations Define Trademark Use In Non-Use Cancellations

Beijing, China – Trademark holders will now have clearer guidelines when it comes to proving the use of a registered trademark when defending against cancellation applications.

Chinese Trademark Law and corresponding regulations provide that a person may apply to the Trademark Office for cancellation of a registered trademark which has not been in use for three consecutive years or more. Thereafter, the onus is on the registrant to provide evidence of use or to furnish a reasonable explanation for non-use, within two months of receiving the Circular of Providing Evidence of Use of Registered Trademark (“Circular”) from the Trademark Office. However, the phrase “use of the registered trademark” was never specifically defined. This made it onerous and difficult for trademark registrants and agents to provide credible and adequate evidence to the Trademark Office in a timely manner.

To dispel doubts and confusion, the Trademark Office has issued new regulations to explicitly define the term “use” of a registered trademark to mean “to use the trademark on goods, packaging or container of goods and the transactional documents related to goods, or use the trademark in advertising, exhibition and other commercial activities”. “The release of trademark registration information shall not be deemed to be use of the trademark in commercial activities”. In addition, trademark licensing agreements, sales or service agreements and written testimony alone will not be accepted as evidence of trademark use without other corroborative evidence.

It must be pointed out that the new regulations are merely procedural in nature. Hence, they do not have any binding effect.

To learn more about the new regulations and their implications, please contact our trademark group at trademark@lehmanlaw.com or visit www.lehmanlaw.com.

LEHMAN, LEE & XU is a prominent Chinese corporate law firm and trademark and patent agency. The firm has offices in Beijing, Shanghai, Shenzhen, Hong Kong, Macau, and Mongolia. The firm is managed by Mr. Edward Lehman, who has nearly twenty years of legal experience in China.