Navigating Trademark “Use” in China: Your Essential Guide
The Cornerstone of Chinese IP Law: Understanding Trademark “Use”
Navigating trademark law in China can be challenging, especially when it comes to understanding what counts as legitimate trademark “use.” This guide will help you understand the key aspects of trademark use under Chinese law. It offers actionable insights to help you avoid costly mistakes and ensure your trademarks stay enforceable, defendable, and valuable.
First-to-File vs. First-to-Use: China’s Nuance
China follows a first-to-file system, meaning the first entity to register a trademark gains exclusive rights, even if another party was the first to use the mark. This system contrasts with the first-to-use system common in many Western countries, where the party using a trademark first generally holds rights. While registration is vital, it’s only the first step. To maintain enforceable rights, continuous use of your trademark is essential.
For example, if your trademark is registered but not used in China, competitors could challenge your registration and potentially win the rights to your mark. Therefore, continuous, documented trademark use is critical to maintaining your exclusive rights.
The Legal Framework: Where Trademark Use is Defined
Trademark use in China is primarily defined under Article 48 of the Trademark Law of the People’s Republic of China. This legal framework serves as the foundation for evaluating the authenticity of trademark activities in the marketplace. Chinese law recognizes a wide variety of commercial touchpoints where trademarks can be used, from product packaging and advertising to services provided. This diverse range ensures that trademarks are used not just as source identifiers but as key instruments in a brand’s overall market strategy.
The law also reflects China’s evolving economic landscape, where digital platforms and international business practices increasingly shape commercial activity.
What Qualifies as Trademark Use
For your trademark to be considered legally “used” in China, it must meet certain core criteria. These criteria ensure that trademarks fulfill their primary function: to distinguish the goods and services of one party from another and to facilitate consumer recognition.
1. Commercial Use Requirement
Trademark use must always be commercial—it cannot be for decorative, educational, or purely internal purposes. To qualify, your trademark should be used in advertisements, invoices, product packaging, or service contracts. Simply printing the mark on internal documents or on brochures distributed at non-commercial events generally won’t meet the legal standard.
What Qualifies as Commercial Use:
- Sales records that show the trademarked product was sold.
- Service contracts where the trademark is associated with provided services.
- Advertising materials that promote your product or service.
What (Generally) Doesn’t Qualify:
- Internal memos or product prototypes.
- Promotional materials for non-commercial events (e.g., conferences).
2. Public Use and Market Presence
Your trademark must be visible to the public, particularly to potential consumers. Private, behind-the-scenes activities (such as internal memos or corporate documents) do not qualify by themselves. The trademark must appear in public-facing materials such as product packaging, signage at points of sale, websites, and service-related documentation.
This requirement reflects the core purpose of trademark law: ensuring that consumers can easily recognize and distinguish the source of goods and services in the market.
3. Territorial Requirements
To be valid in China, the trademark must be used within the country. Even if your brand is well-known globally, the mark must be used in China itself to be protected under Chinese trademark law. This also applies to online and digital uses targeted at Chinese consumers.
Note that for trademark purposes China does not include Hong Kong or Macau. Also, if you operate in China only via online platforms like Alibaba or JD.com, you must ensure that your trademark is prominently used on those platforms to maintain your rights.
Different Ways to Use Your Trademark
In the modern marketplace, trademark use isn’t confined to physical goods. Chinese law recognizes various forms of trademark use, especially in an increasingly digital world.
1. Use on Products and Packaging
A trademark placed on products, labels, packaging, or promotional inserts is an obvious form of acceptable use. Chinese courts assess not only where the trademark is placed but also its visibility and prominence. Is it front and center, or buried in the background? If a trademark is hard to spot, it might not meet the legal requirement.
2. Service-Related Use
For service marks (like those used by restaurants, hotels, or consultants), the mark must be visible at service locations, worn by employees (such as on uniforms), or included in service-related documents. Additionally, online service interfaces or apps that display the trademark are also acceptable uses.
3. Advertising and Promotional Use
If a trademark is used in advertisements (whether print, digital, or social media), promotional materials, or sponsored content, this counts as legitimate use, provided it is tied to commercial activity. Whether you’re running an ad campaign or a digital influencer partnership, the key factor is that the trademark is connected to sales or services.
4. Exhibition and Trade Show Use
Displaying your trademark at trade shows, industry expos, or public events counts as valid use. The China National Intellectual Property Administration (CNIPA) is particularly receptive to this form of use since trade shows are key venues for market entry, product promotion, and brand recognition.
Case Example: A U.S.-based electronics company successfully avoided a non-use cancellation by submitting photographs of its booth at the Canton Fair, showing brochures and signed visitor logs.
Digital and E-commerce Considerations
With the rise of e-commerce and digital marketing, China has had to adapt its trademark laws to reflect the realities of online commerce.
1. Online Marketplace Use
Trademark use on platforms such as JD.com or Taobao counts, but only if there is genuine commercial activity. Courts will examine your sales volume, how long you’ve been active online, customer reviews, and the commercial substance of your online presence.
2. Social Media and Digital Marketing
Posts on platforms like WeChat or Weibo may qualify as trademark use, provided there is an underlying commercial intent. For example, if a social media post promotes products or services and leads to actual sales, it will likely be considered trademark use.
3. Domain Names and Digital Assets
Using a trademark as part of a domain name or on digital assets like a website or app can support a trademark use claim, but it’s generally not enough on its own. Supplementing this with sales records, screenshots, and evidence of digital interactions (like customer engagement) is essential.
Evidentiary Requirements and Documentation
Proper documentation is critical when proving trademark use in China. The following forms of evidence can help substantiate your use claim:
1. Types of Acceptable Evidence
CNIPA accepts the following:
- Invoices and sales records that show the trademark on goods or services sold.
- Signed service contracts or licensing agreements.
- Photos of packaging and other branded materials.
- Advertising materials (digital ads, print ads, brochures).
- Screenshots of e-commerce listings or online activities that show the trademark in use (these should include date stamps and URLs when possible).
2. Documentation Standards
Evidence must be credible, contemporaneous, and sufficiently detailed. For instance, sales records should match the claimed dates of use. Foreign documents must be translated and notarized if required.
3. Third-Party Evidence
Statements from independent third parties such as distributors, retailers, or customers can bolster your case, particularly if your own documentation is limited.
Non-Use Cancellation Proceedings
One of the most critical aspects of trademark law in China is defending against non-use cancellation actions.
1. The Three-Year Rule
If your trademark is unused for three consecutive years, a competitor or third party can file a non-use cancellation petition. The clock begins on the registration date, and it is the responsibility of the trademark holder to prove that the mark has been used.
However, in recent years, CNIPA has tightened the procedural standards for accepting such cancellation petitions. In many cases, CNIPA increasingly requires the petitioner to submit evidence of having conducted preliminary investigations—such as online searches, store visits, or inquiries to distributors—to reasonably ascertain whether the mark has been used. Petitions lacking this initial diligence may be rejected outright.
That said, once a valid cancellation action is accepted, even limited or sporadic use of the trademark—provided it meets the legal standards for commercial use in China—can be sufficient to maintain the registration.
Case Example: A Chinese auto parts company lost its trademark registration in China when a competitor successfully proved that it had not used the trademark for three years.
2. Defensive Strategies
Defending against a non-use cancellation requires substantial evidence of use, ideally covering the full three-year period. Keeping dated, verifiable records is key. Additionally, trademark use by licensees may count, provided it is documented appropriately.
3. Exceptions and Special Circumstances
Certain exceptions apply, such as force majeure (e.g., natural disasters) or preparations for market entry (e.g., obtaining regulatory approvals). For example, the COVID-19 pandemic caused widespread disruption and impacted trademark use evaluations.
Comparative Analysis: Use vs. Registration
Understanding the interplay between use and registration is crucial in China.
1. First-to-File System Implications
In China, registering your trademark is essential, but without use, your rights are vulnerable. Simply registering your mark will not protect you if you cannot demonstrate genuine, commercial use.
2. Well-Known Trademark Considerations
Well-known marks in China receive special protection. However, establishing “well-known” trademark status requires strong, documented evidence of use and market recognition. Foreign use may help but does not replace the need for direct exposure within China.
Industry-Specific Considerations
Trademark use often differs across industries:
1. Manufacturing and Export-Oriented Businesses
For manufacturers producing goods in China for export, use can still count if the brand owner controls production and engages in commercially substantive activities in China.
Case Example: A German electronics firm maintained its registration by showing Chinese-language manuals and shipping documentation alongside its exported units, proving local market involvement.
2. Service Industries and Digital Businesses
For service industries (like SaaS, education portals, or digital services), it’s critical to show client engagement, payment records, and platform branding aimed at Chinese consumers.
3. Licensed Operations and Franchising
Trademark use by a franchisee or licensee counts as long as it’s well-documented and overseen by the trademark holder. License agreements must comply with Chinese commercial standards and must be recorded with CNIPA.
Recent Developments and Trends
Trademark law in China is evolving rapidly, reflecting both judicial and regulatory changes:
1. Judicial Evolution
Chinese courts are increasingly recognizing modern commercial realities, including digital and international commerce, while ensuring that use standards are met.
2. Regulatory Updates
CNIPA has issued updated guidelines on acceptable evidence for e-commerce and social media activities. These guidelines clarify how digital platforms can demonstrate commercial activity.
3. International Harmonization Efforts
China’s involvement in international trademark agreements, such as WIPO, encourages consistency across jurisdictions and fosters greater protection for multinational brands.
Strategic Recommendations for China Trademark Holders
Trademark holders in China must actively document their use and maintain a strong IP portfolio. Here are strategic recommendations to help safeguard your brand:
1. Proactive Use Documentation
Create processes to document use regularly, including:
- Sales invoices, receipts, and contracts.
- Advertising campaigns and digital ads.
- Product photos, packaging samples, and trade show materials.
- Digital assets (screenshots, e-commerce listings, social media posts).
2. Portfolio Management Considerations
Regularly audit your trademark portfolio. Be strategic about which marks to use, license, or abandon. Maintaining unused marks can be costly.
3. Cross-Border Strategy Integration
Ensure your global trademark strategy aligns with China’s unique rules. Coordinate with local counsel to ensure compliance in this dynamic market.
Conclusion: Your Next Step
Trademark rights in China aren’t secured by registration alone—they require real, documented use. If you own trademarks in China or plan to expand, don’t wait until it’s too late. Audit your trademarks and document your use now to ensure your rights are protected.
