Validating trademark use in the face of cancellation challenges

In China, a trademark’s validity can be challenged through non-use cancellation actions. If a trademark owner has not used its mark for a continuous period of three years, another party can apply to have the mark cancelled on the grounds of non-use (see “Understanding the legislation that governs non-use cancellation attacks”).

To successfully defend against a non-use cancellation action, trademark owners must be able to provide clear and convincing evidence of valid use. Evidence can take various forms, including selling goods/services under the mark, advertising and promotional activities featuring the mark and use in the relevant market (see “How to defend against non-use cancellation attacks”).

Scope of registration

In principle, the use of a registered trademark should be for the designated goods, and using it in this way is necessary to maintain its registration right. However, in non-use cancellation cases, a trademark owner will often use its mark for goods/services that differ from those specifically designated in the trademark’s registration. It is therefore crucial to determine whether evidence of use for these other goods/services can in fact still protect the mark in a non-use cancellation attack.

Case one

Company A registered a trademark in Class 3 for shampoo, facial cleanser, bath lotion, cosmetics and perfumes in China (reg 9877802). Company A has been engaged in production and sales activities for many years, but only produces, sells and uses its mark for shampoo, essence water and eye cream – all classed as cosmetics – and does not sell or use its mark for facial cleanser, bath lotion or perfumes.

Under the Chinese Classification of Goods and Services (CCGS), shampoo, facial cleanser, bath lotion, cosmetics and perfumes all fall into Subclass 0306 of Class 3 and are similar. According to the Guidelines for the Examination of Trademarks, valid use of a registered trademark on one designated good is sufficient to maintain the registration of the mark for other similar goods. Therefore, assuming that Company A’s evidence of using the registered trademark on shampoo and cosmetics is valid, the evidence can also maintain its registration for these similar goods in a non-use cancellation attack.

Case two

Company B registered a trademark in Class 3 for sesame paste (reg 11921096). However, it only provided evidence of use of the mark for oat flakes, which is not the good designated by its registration.

In 2019, the Administrative Case Handling Guidelines for Trademark Prosecution and Confirmation Cases of the Beijing Higher People's Court pointed out that if a party only uses a disputed trademark on goods/services outside the designated usage range, its claim to maintain registration on the designated goods will not be supported, even if the two products are similar.

Since Company B did not use the trademark on the product that it was registered for, the evidence of use for oat flakes was not sufficient to maintain the registration of the trademark on sesame paste in a non-use cancellation attack, despite the two goods being classed as similar under the CCGS.

Case three

Company C applied to register its brand logo as a trademark for cosmetics in Class 3 (reg 18116327). However, the company only used its mark for baby face cream, which is not the specific good on which the mark is registered for use. 

Under the CCGS, goods/services in the same subclass do not all have the same scope. Cosmetics and baby face cream both belong to Subclass 0306 in Class 3, but it is clear that cosmetics has a broader scope than baby face cream, which is a kind of cosmetic.

The evidence of use submitted by Company C for baby face cream was considered valid trademark use under cosmetic products. This evidence can also be used to protect similar goods in this class, such as facial washing milk and soaps. Like baby face cream, these are classed as cosmetics, on which the trademark registration was designated.

Key takeaways

Trademark applicants should carefully choose the goods/services classes under which to file a registration application in China. Doing so will help them to prepare for efficient commercial use and trademark rights protection in the event of a non-use cancellation attack.