Issues in Providing Use Evidence in Non-Use Procedures

1. Background

1.1 Brief Introduction

According to statistics from the China National Intellectual Property Administration (“CNIPA”), as of August 2024, the number of valid trademark registrations in China reached 48.566 million. This vast number of registered trademarks significantly complicates the registration of new ones. With the CNIPA and courts increasingly limiting the adoption of consent letters in trademark registration examinations, filing three-year non-use cancellations against conflicting prior marks has become a prevalent strategy to remove registration obstacles.

Consequently, providing qualified use evidence to defend trademark registrations has become a critical issue for registrants, particularly when discrepancies arise between goods descriptions in actual use and those listed in registrations.

1.2 Key Points and Recent Changes in Practice

1. If the trademark actually used is not identical to the registered trademark but retains the distinctive features of the registered mark, such use may still qualify as use of the registered trademark.
2. If the product on which the trademark is used has a non-standard goods description and this differs from the registered product name but is essentially similar to or a sub-category of the registered product, the use may still be judged to be valid for the registered product.
3. Evidence proving the use of a mark on one registered item (A) may allow registration to be maintained for both item A and other items similar to it.

It is important to note that prior practice allowed registrants to maintain all registered goods if evidence of use was provided for a single item, even if unrelated. However, this has changed in recent years. Currently, if evidence proves use on only one item, registration is maintained only for that item and other similar goods, while unrelated items are cancelled.

2. Case Study

2.1 Summary of a Sample Case

A client company specializing in medical care products registered an English trademark, A, in 1990’ s.

In earlier years, CNIPA was more lenient with goods descriptions, allowing registrations like “ostomy supplies, namely ostomy bags, attachment ring for ostomy … ” These so-called “non-standard” goods descriptions were accepted in CNIPA’s database and has been split into multiple items as below:

In 2020, a third party filed a non-use cancellation against trademark A to remove obstacles to their own filing.

2.2 Defending Trademark A in Non-use Cancellation

The case has gone through non-use cancellation, review of the cancellation decision, and first-instance litigation, eventually culminating in a court decision overturning CNIPA’ s decision on review.

Key focuses included:

1. Proving that the goods in actual use correspond to the registered goods.
2. Determining which similar goods should remain registered if the first point was proven.

The registrant submitted notarized online sales webpages from Tmall and JD.com featuring the registered trademark on ” 造口袋 ” (slightly different from the registered ” 造口术用袋 “) within the required timeframe, alongside customs declarations listing the goods as “ostomy care products.” Despite differences in wording, the court judged that the evidence was sufficient to demonstrate use on “ostomy supplies, namely ostomy bags.”

To maintain registration more broadly, we identified a new acceptable description—“造 瘘 袋”—from the latest classification under sub-class 1004. By providing dictionary translations, industry comparisons, and product descriptions, we argued that ” 造口术用袋 ” is actually the same as said new acceptable description, thus should also be classified under sub-class 1004. Consequently, we argued that the related registered items within 1004 should also be maintained.

3. Points to Note

3.1 Trademarks Registered in Earlier Years

For those trademarks registered in early years when non-standard goods descriptions were still acceptable at the time of filing trademark applications, there may be situations where non-standard goods descriptions s are not classified into sub-class or the classified sub-class is incorrect. When facing non-use cancellation, the registrants need to prove to which sub-classes these non-standard descriptions should be classified, so that corresponding use evidence can be provided to maintain the registration of the correct sub-classes.

To better persuade the CNIAP to accurately categorize the registered goods that have not been correctly classified into the desired sub-class so as to maintain registration on the similar goods together, the method includes:

1. Reviewing updated classifications to identify acceptable terms that closely match the product in challenge.
2. Checking recent registrations to see if similar products are classified under the desired sub-class.
3. Analyzing functional, purpose-related, and consumer-oriented similarities between the product and those in the target sub-class.

Additionally, as CNIPA updates the local sub-classification table periodically, registrants can file new applications for the same mark using updated terms to better describe their goods or services.

3.2 Trademarks Registered in Recent Years

For recentregistrations, usually only goods/services descriptions listed in the updated sub-classification table are accepted. This often results in discrepancies between the registered descriptions and those used in commerce.

When challenged by non-use cancellation and required to submit use evidence, the registrants first need to prove the goods/services names in their use evidences indeed correspond to the registered ones.

In such cases, registrants must prove that the goods or services mentioned in use evidence correspond to those registered. This involves:

1. Citing dictionaries, transaction materials, or trade association guidelines.
2. Providing media reports or certified translator statements to demonstrate equivalency.

For example, in a recent case, we successfully proved that “wafers” used in trade documents corresponded to “semiconductor materials” registered under the trademark and thus helped the registrant to maintain their registered goods for “semiconductor materials” and other similar ones.