Unlike the United States, you do not need to prove “use” for a China trademark application to proceed to registration, and once a trademark is registered you do not have to prove you are still using trademark to be able to maintain or renew the registration for that trademark.
Foreign companies have come to realize that China’s lack of a trademark use requirement is a double-edged sword. On the one hand, it allows trademark squatters to register marks for a wide range of products and services they have no intention of ever providing. On the other hand, it allows “real” trademark owners to register their marks to cover a much wider range of products and services than would be allowed in most other countries. Some international brands take full advantage of this and register their marks in a wide range of classes, far beyond what they plan to actually market in China.
However, China does require evidence of use if a trademark registration is challenged for non-use. The basic rule is that once a mark has been registered for three years, it is vulnerable to a non-use cancellation. At that point, if a third party files a non-use cancellation, the owner has two months to provide evidence showing that it did in fact use the registered trademark within the past three years.
If you are actively marketing your goods or services in China, it is usually incredibly easy to provide evidence of use. Your use of the trademark in question on packages, containers, labels, manuals, advertisements, product displays, signage or even on the Internet or at exhibitions are all likely to be sufficient. In general, original documents are required, but usually this too is a pretty low bar. OEM manufacturing constitutes use, by the way.
This all said, you still need original documentary evidence!
It is all too common for foreign companies to order products from their China manufacturer for years on end using English-only documents that never identify the trademark on the products, and often never even identify the product with sufficient specificity. That makes it almost impossible to prove use to the CTMO’s satisfaction. What you want are Chinese language documents that clearly demonstrate your use of your mark in China on the products covered by your trademark registration: documents such as invoices, shipping documents, quality inspections, and customs export declarations. You should make sure to keep a complete, regularly updated set of documents for each of your China trademark registrations. Photographs are helpful to provide context but, standing alone, are usually insufficient to demonstrate use.
Typically, most (or all) of the documents that can prove trademark use for export-only products are held by the factory. This means that it is important that you gather up your documentary proof of use while you are still on good terms with your factory. If things go south with your supplier, you don’t want your trademarks to be at risk too.
In a future post, I will discuss the nuts and bolts of challenging a company that you believe has not used its Chinese trademark for more than three years, something our China trademark lawyers do quite often so to “recover” brand names for our clients.
