70 71 CHAPTER 5 3. The applicant who submits an application for revocation of a registered trademark for three years without use can be any unit or individual. II. HOW TO DEAL WITH THE ENTERPRISE’S REGISTERED TRADEMARK BY OTHERS FILED TRADEMARK THREE YEARS OF NON-USE REVOCATION APPLICATION. Comprehensive China’s “Trademark Law”, “Trademark Review Standards”, “Trademark Infringement Judgment Standards” and other relevant laws and regulations, as well as years of experience in handling cases, the author provides the following response program and recommendations: (i) Enterprises shall actively prepare and provide the State Intellectual Property Office with evidence of the use of registered trademarks that meet the following requirements. (a) The evidence should show the specific time when the evidence was formed and be in accordance with the designated period set forth in the Notice on Providing Evidence of Use of Registered Trademarks. For example, within the three-year designated period from May 1, 2016 to April 30, 2019. (b) The evidence can prove that the use of the registered trademark shall be the same goods or service items designated in the Notice on Providing Evidence of the Use of the Registered Trademark, which may be all the goods or all the service items of the registered trademark, or some of the goods or some of the service items of the registered trademark, but not the similar goods or service items of the goods or service items designated by the registered trademark. (c) The evidence should show who is using the registered trademark, including the trademark registrant, the licensee of the trademark, and others who are not using the trademark against the will of the trademark owner. If there is a trademark license, it is necessary to provide the relevant trademark license evidence to prove the existence of the licensing relationship. (d) The evidence shall be the evidence of commercial use of the registered trademark, including all evidence of the use of the trademark for goods, goods packaging or containers, and instruments of commodity transactions, or the use of the trademark for advertising, exhibitions, and other commercial activities for the purpose of identifying the source of goods. Evidence of commercial use specifically includes the following forms of expression: 1. The specific manifestations of trademark use on designated goods are as follow: (1) Adhere the trademark to the products, packaging, containers, labels, etc., or use it on additional labels, product instructions, brochures, price lists, etc., by directly attaching it, engraving it, branding it, or weaving it; (2) Trademarks are used on transaction instruments linked to the sale of goods, including the use of sale contracts, invoices, bills, receipts, certificates of import and export inspection and customs declaration documents; (3) The use of a trademark in the media, such as radio or television, or publication in a publicly as well as advertising for the trademark or goods using the trademark by means of billboards, postal advertisements, or other means of advertisement. (4) The use of the trademark at exhibitions and fairs, including printed materials and other materials using the trademark provided at exhibitions and fairs. (5) Other forms of trademark use in accordance with the law. 2. Specific manifestations of the use of the mark for the designated services are as follow: (1) The use of the trademarks directly in the place of service, including brochures describing the service, signboards of the place of service, store decorations, staff costumes, posters, menus, price lists, raffle tickets, office stationery, letterheads, and other supplies related to the designated service; (2) Trademarks are used in documents linked to services, such as invoices, remittance documents, agreements on the provision of services, and certificates of repair and maintenance; (3) The use of the trademark in the media, such as radio or television, or in publications of public circulation, as well as the advertising of the trademark or services using the trademark by means of billboards, postal advertisements, or other means of advertising. (4) The use of the trademark at exhibitions and fairs, including printed materials and other materials provided at exhibitions and fairs in which the trademark is used; (5) Other forms of trademark use in accordance with the law. (e) The evidence of trademark use provided shall be evidence of the standardized use of the registered trademark. The said standardized use shall be the actual use of the trademark and the registered trademark is identical, or the trademarks that are different but are basically indistinguishable in visual effect or auditory perception of sound marks and difficult to be distinguished by the relevant public. According to Article 26(2) of the Opinions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases on Trademark Authorization and Confirmation of Rights, if the actual use of a trademark sign differs slightly from the approved registered trademark sign, but does not change its distinctive features, it can be regarded as the use of the registered trademark.From this, it can be seen that if the actual use of the trademark and the registered trademark are only slightly different, without changing the distinctive features, it can be regarded as the use of the registered trademark, which belongs to the category of standardized use of trademarks. In judicial practice, only in the actual use of the registered trademark font or letter size change, or only the text position adjustment, such as the horizontal arrangement into the vertical arrangement, are not change the distinctive features of the registered trademark, belong to the registered trademark of the normative use. The author needs to remind that the irregular use of registered trademarks may constitute trademark infringement and shall bear the corresponding infringement liability according to law. In particular, to avoid the following kinds of irregular use of registered trademarks: for example, by changing the registered mark or using several registered marks in combination or the same as another person’s registered trademark for the same kind of goods or services. Another example is to change the registered trademark or use multiple registered trademarks in combination, which is similar to others’ registered trademarks for the same or similar goods or services and is likely to lead to confusion. One more example is that a registered trademark that does not designate a color can be freely attached to a color, but if the color is attached for the purpose of climbing, and is similar to another person’s registered trademark for the same or similar goods or services, and is likely to lead to confusion. (ii) If the registered trademark is not used but there is a justifiable reason, the justifiable reason for not using it can be stated to the Trademark Office, which includes: 1. The trademark cannot be used within the designated period due to force majeure; 2. The trademark cannot be used within the designated period due to government policy restrictions, which are generally only applicable to specific goods or services; 3. The trademark could not be used because the trademark registrant went into bankruptcy and liquidation; 4. Other legitimate reasons not attributable to the trademark registrant. (iii) The mere submission of the following evidence shall not be deemed to be a use of the mark within the meaning of the Trademark Law. 1. Sales Contracts or agreements and contracts for the provision of services; 2. Written testimonies. 3. Physical evidence, audio-visual materials, website information, etc. that are difficult to identify as altered or not. 4. Objects and replica III. THE APPLIANCE CORPORATION PROVIDED SALES INVOICES, WHY CAN NOT PROVE THAT THE DISPUTED TRADEMARK CONSTITUTES THE ACTUAL USE IN THE SENSE OF TRADEMARK LAW? The legislative purpose of the withdrawal system in Article 49(2) of the Trademark Law is to encourage the use of trademarks and to clean up unused trademarks, as well as to avoid the waste of trademark resources. In determining whether a trademark has ceased to be used for three consecutive years, whether the trademark registrant has the intention to use the disputed trademark consistently over a long period of time is an important factor to consider. The Appliance Corporation in this case provided some evidence of use and provided invoices clearly labeled with the trademarks at issue. However, after a comprehensive review of the evidence submitted by the company, the court held that the invoices submitted by the company stated that the number of washing machines, washing and drying machines and vacuum cleaners sold was only one, and that the company was unable to provide certificates of authentication of the goods sold and certificates of product quality conformity to support them, and that such sales pattern, number of sales and scale of sales were not in line with the normal trade practices of the industry. Therefore, taking into account the manner of use of the disputed trademark in the evidence, the frequency of use, the scope of publicity, industry habits and other factors, the court in this case found that the evidence of the disputed trademark is only symbolic evidence of use, not evidence of actual use in the sense of trademark law, and accordingly revoked the disputed trademark. CHAPTER 5
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