In the recent years, the number of trademark applications has increased tremendously, but the number of words that can be registered as trademarks is limited, therefore, when a mark has been registered for 3 years, it may be cancelled by other parties on the grounds that the mark was not in used for 3 consecutive years. It is very important to preserve the evidence of use to avoid the cancellation of one's trademark by others on the grounds of “non-use”.

Trademark use and cancellation

As a symbol to identify the origin of goods and services, a trademark can only perform its intended function if it is put into actual use. If a trademark has not been used for years after its registration, it has lost its value and become a “dead trademark”, so it’s best for the mark to change its ownership.

The purpose of the establishment of the cancellation system for non-use of trademarks in a continuous period of 3 years, on one hand, can avoid the waste of trademark resources, to let others with real intention to use the resources; on the other hand, it can encourage trademark owners to actively fulfill their trademark use obligations.

There are 2 main reasons for a trademark to be requested for cancellation:

1. The trademark has a positive meaning that other companies also want to register, however, the mark has already been registered, so they request cancellation to that registered mark on the grounds of non-use for 3 consecutive years and allow the late applicant to register the mark accordingly.
2. The prior registered trademark and the trademark applied for registration by others earlier are similar and blocks the registration of the mark by others thereafter. The late applicant shall file a request of cancellation to the prior registered mark on the grounds of non-use for 3 consecutive years, thereby enabling the registration of the similar mark applied for later.

Evidence of trademark use

So, what’s the evidence of use to avoid the mark being cancelled by others on the grounds of non-use for 3 consecutive years?

• Directly affixed, engraved, branded or woven trademark on goods, packaging, containers, labels, etc. or use the mark on additional tags, product descriptions, brochures, price lists, etc.
• Use the mark directly on the service premises, such as service brochures, service premises billboards, store decorations, staff uniforms, posters, menus, price lists, coupons, office stationery, letterheads, and other supplies related to the designated use of the service.
• Use the mark in connection with the sale of goods, such as sales contracts, invoices, bills, receipts, import and export inspection and customs declarations, etc.
• Use the mark on documents associated with services, such as invoices, remittance receipts, service delivery agreements, maintenance and repairs agreements, etc.
• Trademark used in radio, television and other media, or published in open publications, as well as advertising the goods by way of billboards and postal advertisements, etc.
• Trademark used in exhibitions and fairs, including the printed materials and other materials provided at the exhibitions and fairs using the mark.

Collecting evidence of use

There are many types of evidence that can prove the actual use of a mark, and it is not complicated for the registrant to provide. However, due to the influences of various factors such as industry practices, trading habits and the day-to-day administrative system of a company, the evidence that many right holders provided was not standardized, which results in the limitation of their evidence value. Therefore, companies should pay attention to the followings during the process of collecting evidence:

• The everyday use of the trademark should be consistent with the mark on the registration certificate as much as possible. If changes are made when using the trademark, for example the mark is originally in Chinese and graphics or English elements are added to the mark or the mark is used inconsistently, it may result in cancellation of the registration.
• It is important to keep the originals of any evidential material that can be used as evidence. The originals are the most straightforward evidence of authenticity and has a higher evidential value.
• It is necessary to form a complete chain of evidence among the evidence of use, to prove the duration of use, the logo and the goods used at the same time. In the process of cancellation, complete evidence should be able to demonstrate three elements at the same time: (1) the logo, (2) the use of goods or services, and (3) the duration of use. There's a lot of evidence due to the content that can be proved is relatively unitary, if there is no other evidence to back it up, it shall not be used as valid evidence. For example, if the trademark is used on the package, container or labels of goods, or on the menu or price list of services, these evidences cannot indicate when the mark was used and therefore difficult to be accepted by the Trademark Office. Under normal circumstances, transaction documents or documentation of goods or services, such as contracts, invoices, maintenance and repair agreements, advertising materials, etc., are relatively “good” evidence and are relatively easy for companies to retain. Such evidence can prove the duration and publicity of the use of the mark and is easy to form a complete chain of evidence among them.
• The use of the trademark is not only limited to the use of the owner but also the use of the licensee can be regarded as valid use of the mark. A trademark can be transferred or licensed to others. When a trademark is requested to be cancelled by other parties on the grounds of non-use, the evidence of use provided by the licensee can also demonstrate the use of the trademark, thereby ensuring that the trademark will not be cancelled.

Conclusion

As the number of trademark applications increases over time, resources that can be used as trademarks are shrinking, and therefore filing a 3-year non-use cancellation application has become one of the important tactics for applicants to obtain trademark rights. Therefore, companies should consciously record and manage the evidence of use of their trademarks in the process of development, and only then can they secure their marks no matter who raises a “3-year non-use cancellation” request.