China Trademarks: Use ’em or Lose ’em

Like most countries, China has a use requirement for trademarks. For your China trademark to remain valid, you must use it in commerce at least once every three years. But as we wrote in China Trademarks: When (and How) to Prove Use of a Mark in Commerce:

Unlike the United States, China does not have an affirmative requirement to prove that a trademark is being used in commerce. You do not have to prove use for a trademark application to proceed to registration, and once a trademark is registered you do not have to prove you are still using it to maintain or renew the registration.

China does require proof of use in certain circumstances. The most well-known circumstance is when a trademark is challenged for non-use; at that point a trademark owner has two months to provide evidence of use in the three years prior to the non-use cancellation being filed. (You can’t start using the mark after receiving the notice.) Another circumstance is when a trademark owner is suing a third party for trademark infringement and trying to prove damages. If you can’t show that you have been using the trademark yourself, it’s difficult to convince a Chinese court that you lost money due to another party’s infringement.

The kind of evidence that is acceptable to establish trademark use is similar to that accepted in the United States: Goods bearing the mark, advertisements, business documents, etc. Note that “symbolic use” is not considered sufficient under the relevant regulations. This is meant as a safeguard against trademark owners who, in order to maintain their registration, produce a single item they then present as a specimen. As a practical matter, though, it may be difficult to determine that use is “symbolic.”

Bear in mind that use means use in China. This can be a problem for companies who do not sell in the local market. To get around potential issues, companies should take proactive steps, such as ensuring their trademark is shown on potential evidence. For example, invoices should say “50,000 Widgetex widgets,” instead of just “50,000 widgets.”

As we always say, brand protection is a strategy, not just the registration of trademarks and/or other intellectual property. The more that brand protection considerations are present throughout its business processes, the better a company will be able to protect its brand. Which makes sense, no?