The cancellation of a trademark due to non-use for three consecutive years, commonly known as "three-year non-use cancellation," is a common type of case in our daily legal practice.

According to Article 49, Paragraph 2 of the Trademark Law, if a registered trademark becomes the generic name of its designated goods or is not used continuously for three years without proper reasons, any individual or entity may apply to the Trademark Office to cancel the registration of such trademark.

Therefore, after three years from the publication date of the registration, any individual or entity can file a cancellation application based on the ground that the trademark has not been used in the past three years. In response to a cancellation application, the trademark registrant needs to provide evidence of its use of the trademark in the past three years to maintain the registration. Unless there are circumstances beyond the registrant's control, such as force majeure, governmental policy restrictions, bankruptcy liquidation, or other legitimate reasons not attributable to the registrant, evidence must be submitted. Failure to provide sufficient evidence may result in the cancellation of the trademark.

The legislative purpose behind the three-year non-use cancellation system is to encourage trademark registrants to actively use their registered trademarks, thereby realizing the value of the trademarks and preventing the waste of trademark resources. According to information released by the Trademark Office, in the first three quarters of 2023, China received 5,258,401 trademark applications, with 3,041,532 registrations. As of September 15, 2023, the total number of valid trademark registrations in China reached 43,044,198. With such a large volume of trademarks, there are inevitably many trademarks that are not in use, resulting in a waste of trademark resources. These unused trademarks not only waste the time of trademark examination but also hinder others from using and registering trademarks normally. To address this issue and encourage the use of trademarks, the three-year non-use cancellation procedure was established.

For trademark registrants who receive a notice requesting evidence of trademark use and are unsure of how to provide such evidence to maintain their trademark registration, I offer the following suggestions for reference.

Trademark use refers to commercial use, which includes using the trademark on goods, packaging, containers, trade documents, advertisements, exhibitions, and other commercial activities to identify the source of goods. Evidence of trademark commercial use can be primarily collected from the sale and promotion of goods.

Sales evidence:

  1. Product photos or physical samples, product manuals, brochures, price lists, etc.;
  2. Sales contracts;
  3. Invoices corresponding to sales contracts, import and export inspection and quarantine certificates, customs documents, packing lists, e-commerce transaction documents or records, etc.

Promotional evidence:

  1. Advertising media;
  2. Advertising contracts;
  3. Invoices corresponding to advertising contracts;
  4. Contracts for participating in exhibitions;
  5. Invoices for booth rental at exhibitions;
  6. Exhibition photos.

The above evidence materials should meet the following requirements:

  1. It shows the trademark logo;
  2. It demonstrates the use of the trademark on the designated goods or services;
  3. It shows the user of the trademark, including the trademark registrant themselves, as well as others licensed by the trademark registrant, and other individuals using the trademark without violating the will of the trademark owner. If licensed to others, the existence of the license relationship should be proven. Evidence of the existence of a license relationship may be the license record filed with the National Intellectual Property Administration or the trademark license agreement. Evidence of commercial use between the trademark registrant's affiliated companies and third parties is also valid evidence of trademark use. Evidence should be provided to prove the existence of a relationship between the trademark registrant and affiliated companies, such as evidence of investment relationships or shareholder relationships.
  4. It displays the date of trademark use, and should be within three years from the date of the application for cancellation. For example, if the date of filing the cancellation application is November 9, 2023, the trademark registrant should submit evidence of using the registered trademark between November 9, 2020, and November 8, 2023.

Trademark registrants should be aware that only submitting the following evidence does not constitute trademark use in the sense of trademark law:

  1. Sales contracts or agreements for providing services;
  2. Written testimonies;
  3. Physical evidence, audio-visual materials, website information, etc., which are difficult to identify whether they have been modified;
  4. Physical objects and copies.

To avoid the cancellation of a trademark during the cancellation process, we recommend that trademark registrants consciously retain the above evidence in their daily work for future needs.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.