What constitutes evidence of use?

08 May 2018

The concept of use arises frequently in trademark law, but there may be regional differences in its presentation. The focus of this article will be on how it can be raised and proven at various stages of a trademark's life in Canada, the United Kingdom, France, Germany, Russia the United Arab Emirates and China.



Canada

The Canadian trademark system is based on use: currently, there must be use of a trademark in order for a registration to issue. While no evidence of use is required during the prosecution of an application, it may be necessary to submit evidence of use if the application is opposed. Further, a person who has used a trademark can enforce his or her rights in the mark, in the absence of registration. Use of a trademark is also essential to the maintenance of a registration. A registered trademark must be used in order for avoid expungement. Section 45 of the Trade-marks Act provides that, after three years of registration, the Registrar may, upon request, issue a notice requiring the registered owner to show that the trademark has been used in association with the goods or services listed in the registration. In the absence of exceptional circumstances, failure to demonstrate use of the registered trademark for the registered goods or services in the three years preceding the date of the Registrar's notice will result in the expungement of the registration.

What must the owner of a registered trademark provide as evidence of use? This will depend on whether the trademark is associated to goods or services.

The Canadian Trade-marks Act distinguishes between use of a trademark in association with goods, and use of a trademark in association with services.

According to s. 4(1) of the Trade-marks Act, there is use of a trademark in association with goods if a trademark is applied to the goods or their packaging at the time of transfer of possession or property of the goods, in the normal course of trade. As a general rule, this means that in order for there to be use of a trademark in association with goods, the trademark must appear on the goods themselves, or on the packaging, tags or other forms of labels applied to the goods, at the time of sale of the goods in the normal course of trade. Advertisement of the goods in Canada is insufficient to constitute use of the trademark. There must be a sale of the goods to a Canadian consumer. Product giveaways or promotional products distributed free of charge would not satisfy the requirements of use.

In responding to a notice under section 45 of the Trade-Marks Act, the registered owner will have to produce evidence of use of the trademark in the form of an affidavit or statutory declaration. The affidavit or statutory declaration should include:

  • evidence of the sale of the registered goods in Canada - in most cases, this will require the filing of copies of invoices for the sale of the goods;
  • images, such as photographs, showing the trademark applied to the goods, or specimens of packaging, tags or other labels bearing the trademark;

The normal course of trade may vary from one industry to another. Certain industries are seasonal, such that the normal course of trade for a specific product may mean sales for a period of four weeks in a year. When responding to a notice under section 45, the registered owner should explain in his affidavit, what the normal course of trade for his business is. However, token sales or one-time sales made simply to establish use of a trademark, would not be considered as being in the normal course of trade.

Section 4(1) of the Trade-marks Act also provides that there is also use of a trademark in association with goods if the trademark is associated to the goods in any other manner such that notice of the association of the trademark to the goods is given to the consumer at the time of transfer of property or possession. For example, a trademark appearing on a point of purchase display would be considered as being used in association with the goods displayed therein. Photographs of the point of purchase display bearing the trademark should be filed in support of the registrant's affidavit.

The concept of use in association with services appears more permissive. Section 4(2) of the Trade-marks Act provides that a trademark is deemed to be used in association with services if it is use or displayed in the performance or the advertising of the services. Promotional materials or pages from a web site featuring the trademark and describing the services would constitute evidence of use of a trademark in association with services. The term "service" has been interpreted broadly and, while the services must be offered in Canada, in certain circumstances, the performance of ancillary services may be enough to maintain a registration. For example, use of a trademark for "reservation services" was found sufficient to support a registration for "automobile rental and leasing services". It is therefore important for the trademark owner to explain how the services are offered and performed in Canada.

United Kingdom

During the UK trademark registration process a third party may oppose an application on the relative grounds set out at section 5(1)-(3) of the Trade Marks Act 1994 ("the Act") provided said third party is the proprietor of a pre-existing trademark or other relevant right. To summarise, the relative grounds are:

  1. Where the earlier registered trademark and the goods and/or services for which it is registered are identical.
  2. Where the earlier trademark and the goods/services for which it is registered are identical or similar, and there is a likelihood of confusion on the part of the public, which includes the likelihood of association of the two marks.
  3. A mark that takes unfair advantage of or is detrimental to the reputation or distinctive character of an earlier mark that is identical or similar.

Where one or more of the above grounds has been raised in opposition to a trademark application, it shall not prevent registration unless the pre-existing right satisfies one of the use conditions set out at section 6A(3) of the Act, which are:

  1. In the five year period preceding the date of publication of the application the earlier trademark has been put to genuine use in the UK by the proprietor or with his consent in relation to the goods or services for which it is registered; or
  2. The earlier trademark has not been so used, but there are proper reasons for this non-use (this is relied on relatively rarely, and so will not be discussed further).

With regard to the first condition, in practical terms, when the opponent is filing their opposition they will complete a Form TM7, and in this document they will have to specify whether and for which goods and/or services the earlier mark has been used in the relevant five year period. The applicant will then have to decide whether to take this statement of use at face value or require the opponent to provide evidence.

The Act provides limited guidance on what constitutes evidence of use, but does specify that it includes affixing the trademark to goods or the packaging of goods in the UK purely for export purposes, and that use includes where the mark takes a different form to that registered provided the variations do not alter the distinctive character of the mark.

What is clear is that the use must be genuine, which means more than merely token, it must be consistent with the essential function of a trademark (being to denote the origin of the goods/services), and it must represent real commercial exploitation of the mark on the market for the relevant goods/services. The following are case law examples of what has and hasn't been regarded as genuine use:

Genuine Use

  1. The launch and sale of the goods/services. There is no minimum number of goods that have to be sold to constitute genuine use; rather it is whether the activity under the mark is likely to preserve or create market share.
  2. Preparation to put goods/services on the market, such as advertising campaigns.
  3. Use of a trademark in an organisation's relations with the public (e.g. announcing forthcoming events).

Not Genuine Use

  1. Internal use is not sufficient. Even genuine efforts within a business to get products ready for sale are not enough (e.g. the hiring of local staff). It is only the use of the mark in public that counts. On the other hand, even seemingly high numbers of sales can be treated as insufficient (e.g. the sale of 15,522 bottles of water was not sufficient because the goods protected by the trademark were in class 32, which covers mass consumption goods aimed at the general public, so the market is of significant size and a very high number of sales would be required to count as genuine use).
  2. Distribution of promotional items as a reward for the purchase of other goods and to encourage sales of the latter.
  3. Use during purely private events, or in advertising or announcements of such events, because these constitute private use.

It is worth saying that these are only examples, and are based on the facts of specific cases. The overarching approach the court will take is to examine whether there has been real commercial exploitation of the mark, including the nature of the goods/services at issue, the characteristics of the market concerned, the scale and frequency of use of the mark, whether it has been used for the purpose of marketing all the goods and services covered by the mark or just some of them and the evidence that can be produced.

It is also worth noting that use just in the UK, provided that use is significant, would count as use for the purpose of an EU trademark, even if it is not used immediately in other countries. The courts see the EU as a borderless mass, so the question is whether the use is an attempt to take some of the market share in the EU. If it is, it will likely be considered sufficient. Equally, token use will not be saved just because it is in more than one EU member state.

In practice, to be effective evidence of use of a trademark the following should be illustrated:

  1. The goods and/or services for which the mark has been used - this can take the form of a list of items which utilise the mark in their branding, together with information on the length of time and geographical scope of use.
  2. The sales achieved in relation to these goods and/or services - this should be detailed, and will ideally include the turnover achieved for each relevant product within the UK.
  3. Copies of sales records for the relevant goods/services - for example, invoices and similar financial documents. These can be redacted to preserve commercially sensitive information.
  4. Information on how the mark is used - for example, details of the form it takes (e.g. on packaging, labels, in advertising etc.). Examples of these should then be provided, such as screenshots of adverts on the internet and photographs of packaging on products in store.

It is incredibly important to put thought into the preparation of this evidence because the UK Intellectual Property Office does not like to be inundated with unnecessary documentation. It must be targeted and prove what is necessary without going too far. However, this also needs to be balanced with section 6A(6) of the Act which states that where an earlier trademark only satisfies the use conditions in relation to certain goods and/or services for which it is registered, it will for the purpose of the opposition be treated as only being registered in relation to those goods and/or services (meaning the application can proceed in relation to anything for which use has not been proven).

In addition, whether sufficient proof of use can be provided should ideally be considered by a potential opponent before filing an opposition because it is common for an applicant to require proof of use. If the opponent cannot do this, they then make themselves very vulnerable to a revocation action on the basis of non-use in accordance with section 46(1) of the Act.

France

Under French law, use of the sign is a mean to create and strengthen trademark rights as well as a fundamental requirement to maintain trademark rights.

1. Evidence of use to gain trademark protection: well-known trademarks

In the absence of a trademark registration, the owner of a sign can claim protection if the sign has become well-known[1] through use. To that end, the owner of the sign shall demonstrate that the sign has been used publicly and continuously as an indication of origin and, as a result, is broadly known by a large segment of the public[2].

Case-law shows that the standard set for well-known trademarks is difficult to meet. For instance, in a case involving the American band EARTH, WIND & FIRE[3], the Court of Appeal notably held that the use of a stage name does not amount to a trademark use. The Court of Appeal also held that the reproduction of the band name on CDs would serve as information on the artistic origin of the products but would not be perceived by the public as the indication of the product's commercial origin.

2. Evidence of genuine use to maintain trademark rights and prevent revocation

Pursuant to Article L.714-5 of the French code of intellectual property (CIP), a registered trademark can be revoked if the owner, without due reasons, has not put it into genuine use for the goods or services designated in the registration, during an uninterrupted period of five years.

In the absence of any use of a trademark for five years from the publication of the registration, the owner faces the risk of a revocation[4]. If the trademark has been put in use, the five years period shall then start from the last act of use.

However, the use of the trademark which began or resumed within three-month before the filing date of the action should not be taken into account for the assessment of the genuine use of the trademark if the owner had been previously informed of the risk that revocation proceedings may be filed[5].

Revocation of a trademark may be requested:

  • by way of proceedings filed with the trademark Court by any third party having a legitimate interest such as:
  • the owner of an identical/similar trademark who wishes to use the non-used trademark without facing the risk of an infringement action;
  • a company which name and line of business are identical/similar;
  • by way of counter-claim as a defence in an infringement action.

It should be noted that, until the implementation of the Directive 2015/2436 by January 2023 which will allow revocation actions to be initiated before the French trademark office, revocation for non-use remains within the exclusive jurisdiction of the trademark court.

So as to maintain rights and avoid revocation, the trademark must be used as registered or under a modified form that does not affect the distinctive character of the trademark.

In this respect, French courts held for instance that:

  • the use of word "KAPORAL" does not qualify as a use of the trademark in a way that does not alter its distinctive nature[6];
  • the use of the terms "HOPE N LIFE" is not equivalent to the registered trademark that also include a figurative device i.e. a deer skull[7].

Further, the sign must be used as a trademark in accordance with its principal function which is to guarantee the origin of the goods or services that it designates. Thus, evidence of use as a business name[8] or a domain name [9] should not, in principle, be taken into account[10].

Genuine use must be assessed in concreto taking account the market of the products and services at stake[11]. As a result, a confidential use can qualify as genuine "as long as it is justified, in the economic sector concerned, to maintain or create market shares for the products or services in question"[12]. However, in the case of mass-market products or services, a symbolic use for the sole purpose of maintaining trademark rights will not amount to genuine use[13].

Based on the above, French judges will, notably, ascertain the duration of the use, the importance of the use (taking into account the market shares held by the trademark and the turn over or the sales made in relation with the trademark), the extent of the promotion made including catalogues, press coverage (articles and/or advertisements).

As the onus lies with the rights holder, genuine use is assessed on the basis of the documents provided to the court by the trademark owner. In this respect, it should be noted that invoices bearing the trademark would be taken into account whereas internal documents would not be admitted as evidence of genuine use[14].

3. Evidence of use to strengthen trademark rights: a remedy to the lack of distinctiveness

Use can also allow the owner to strengthen trademark rights, in particular if the sign, when registered as a trademark, had a weak distinctive character. Pursuant to Article L.711.1 of the CIP, lack of distinctiveness can be cured through use[15].

According to case law, to demonstrate acquired distinctiveness, the trademark owner must prove a long and public use, and, as a result, that the sign is identified by a significant part of the relevant public as an indication of origin of the goods and services at stake[16]. Even evidence of use for two or three decades may not be sufficient, if the public does not perceive the sign as an indication of origin [17].

4. Evidence of use to increase trademark protection: trademark with a reputation

Pursuant to article L.713-5 of the CIP, the owner of a registered trademark can enjoy a greater protection if the sign has acquired reputation through use. Pursuant to European case-law, a reputed trademark is defined as a trademark "known by a significant part of the public concerned by the products or services covered"[18]. French courts also specified that a reputed trademark is a trademark that has a strong attractive power and represents an intrinsic economic value, conveying a positive and prestigious image[19].

When assessing the reputation of a trademark, the judge must take into consideration all the relevant facts of the case. In this respect, as for trademark use, French and European jurisdictions notably take into account the market shares held by the trademark owner, the intensity, geographical extent and duration of its use and the size of the investment engaged by the owner for the promotion of the brand[20].

Different evidence may be accepted by the courts. For instance, the Court of First Instance recognised the reputation of the trademark "LE TOUR DE FRANCE"[21] on the basis of surveys showing the well-known character of the event worldwide and the wide media coverage received by the event.

If reputation is established, the trademark should then enjoy a wider protection against any "reproduction or imitation" including "for goods or services that are not similar to those designated in the registration… if such use is likely to cause a prejudice to the owner of the trademark or if reproduction or imitation constitutes unjustified exploitation of the trademark".

Germany

Evidence of use - Germany

In Germany, evidence of use can be required in various situations: as the non-use defence in infringement proceedings or opposition proceedings or as an attack in cancellation proceedings. Depending on the actual scenario, the requirements regarding evidence of use and the burden of proof differ:

1. Burden of proof

In regular infringement proceedings, the full burden of proof for use of a trade mark is entirely with the claimant once the defendant has raised the plea of non-use (Section 25(2) 1st Sentence of the German Trade Mark Act, TMA). It is not sufficient to just present prima facie evidence.

In preliminary injunction proceedings, evidence of use may be required as well. However, in this case, it is sufficient to provide prima facie evidence. In preliminary injunction proceedings, the plea of non-use may be raised in particular in a protective writ. If a motion for a preliminary injunction is based on a trademark which is subject to the use requirement (where the grace period has expired) and does not contain any prima facie statement regarding use, the defendant must be given the opportunity to object, in particular by scheduling an oral hearing; this does not apply if the defendant previously filed a protective writ without a plea of non-use.

In a cancellation action, the burden of proof is with the claimant who seeks to cancel the mark. However, this rule is relativised by the fact that, in accordance with the prinCIPle of good faith which also applies in procedural law, the trademark owner has a secondary burden of proof if the claimant has no precise knowledge of the circumstances of use and also does not have the possibility of clarifying the circumstances of use - which the trademark owner usually has.

In German opposition proceedings - contrary to infringement and cancellation action and also contrary to opposition proceedings under the EU Trademark Regulation - no full proof of use is required, but prima facie evidence is sufficient, i.e. the trademark owner merely has to make a plausible case that he/she has used the mark if the other party disputes use of the mark (Section 43(1) 1st Sentence TMA).

In the event that full proof is necessary, the respective party may only provide the means of evidence regulated in the German Code of Civil Procedure (ZPO) which consists of evidence taken by visual inspection, by hearing witnesses, provided by experts, by records and documents and by examination of a party. Where prima farcie evidence is sufficient, it is also permitted to make an affidavit. Further, in general, it is the obligation of the respective party to provide evidence and there is no need for the Court to give advance notice or formally request evidence.

2. Evidence of use

The evidence provided should demonstrate each single occurrence of use of the trade mark during the respective five-year period. Furthermore, the respective party should demonstrate an overall genuine use of the trademark. The "use" of a the trademark in the legal sense is established if the mark in question is used

  1. in order to identify the origin of goods or services,
  2. in the market,
  3. for specific goods and services,
  4. even as second indication together with other indications of origin of the same or similar kind,
  5. but in contrast to a sole use as company name, descriptive designation or decoration.

Keeping all these aspects in mind, the evidence of use of a trademark should, in particular, address the nature of use, the time and its scope.

The following information may serve to prove genuine use:

  • Sales numbers for the relevant goods and/or services which need to be specific in relation to goods/services and relate to the relevant five year period
  • Copies of sales records, invoices, shipping documents etc.
  • Examples of how the mark is used in advertising, catalogues, invoices, packaging etc.
  • Marketing expenses and respective information on advertising spend and advertising measures

In order to be genuine and not just symbolic, the use must serve to open up or secure a market for the relevant goods or services. In line with the finding of the CJEU, when assessing whether use of the trademark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real. In particular, consideration must be given to whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of the goods or services at issue, the characteristics of the market and the scale and frequency of use of the mark. A few things to consider:

  • Low sales numbers are not necessarily an argument against genuine use as long as use of a trademark is economically justified.
  • Genuine use may still be established if the use started shortly before the end of the relevant five year period.
  • Even if a party's submission concerning its world leading position in providing specific services may be presumed to be true, such a submission does not release the party from its obligation to credibly substantiate specific information regarding the scope of sales, market shares, marketing expenses and the like.
  • An affidavit which does not include information on the nature of use for the claimed goods and services is not sufficient as prima facie evidence for proof of genuine use of a trademark (Federal Patent Court, 31 May 2006, case 29 E (pat) 127/04). Also, an affidavit that does not break down the sales numbers for sales within and outside the significant territory is not sufficient to provide prima facie evidence relating to genuine use.

Russia

Russian laws prescribe for the concept of compulsory use of the trademarks. Failure to comply with it entails the risk of an early termination of a trademark due to its non-use. Early termination is governed by Article 1486 of the Civil Code of the Russian Federation. Under the relevant provision the legal protection of the trademark may be early terminated in respect of all or part of the goods or services, provided the trademark has not be used for three consecutive years from the date of registration.

Once the three years grace period elapses any interested party which presumes that the right holder does not use the mark in respect of all or part of goods is entitled to file a non-use cancellation claim with the Intellectual Property court of the Russian Federation. According to the recent changes in the Russian law entered into force on July 12, 2017, before filing a non-use cancellation claim, the interested party must approach the trademark owner with a preliminary proposal to either voluntarily cancel the trademark registration or assign the right to the trademark to the interested party. Within 30 days upon expiration of the two-month period from date of sending the proposal, a non-use cancellation claim can be filed with the court.

Therefore, for a trademark to be early terminated two criteria must be met:

  1. The claim is filed by an interested party;
  2. The trademark has not been used for three consecutive years.

The burden of proof of a legitimate interest in the cancellation of the trademark lies with the claimant, while the defendant has to prove the use of the trademark during the past three years counting back from the non-use cancellation filing date. In a non-use cancellation proceedings the trademark owner must prove genuine commercial use of the trademark in Russia, which may include acts related to the introduction into civil turnover and the factual use of the trademark in respect to goods or services enlisted in the trademark registration. Both criteria represent autonomous and independent grounds for upholding or dismissing a claim. We will proceed with the analysis of what constitutes evidence of use in non-use cancellation proceedings in Russia.

What constitutes use?

In respect to the statutory law Article 1484 of the Civil Code enlists the following acts, which constitute the use of the trademark:

  • the placement of the mark on goods (including labels and packaging of goods) that are manufactured, offered for sale, sold, demonstrated at exhibitions or fairs or otherwise introduced into circulation in the Russian territory, or stored or transported for this purpose, or imported into the Russian territory;
  • use of the mark while performing work or providing services;
  • use of the mark in the documentation accompanying the goods introduced onto the market;
  • use of the mark in offers for sale of goods and services, as well as in advertisements and on signboards; and
  • use of the mark on the Internet, in domain names or in other means of address.

Documents evidencing use

As in any litigation case, the success of the outcome solely depends on the evidentiary base which will be presented to the court. In the context of Article 1484 of the Civil Code, the evidence may include the following documents:

  • supply contracts, shipping documents, documents on volume of productions, photographs of samples of goods with indication of dates;
  • license agreement between prior rightholder and manufacturer registered with Rospatent[22], information on sales of goods, samples of goods;
  • contract on manufacturing goods, payment transactions confirmations;
  • package labels, labeling on documentation, outdoor signs;
  • certificates of conformity, supply contracts, shipping documents, online marketing campaign in conjunction with administration of the domain name;
  • documents, which evidence on factual company's activity, contracts, which evidence ordering polygraphic materials and maquettes;
  • licenses for manufacturing, storing, and supply of alcoholic beverages;
  • manufacturing capabilities for manufacturing goods in conjunction with evidence of further introduction into civil turnover.

What does not constitute use?

When collecting the documents it is crucially important to make sure that all documents do not fall into typical pitfalls such as:

  • documents do not have any references or indications of dates [23];
  • documents are beyond the scope of the examined three year timeframe[24]
  • documents relate to goods or services which are named in the registration[25];
  • failure to provide evidence on introduction goods into civil turnover.

Users of the trademark

Often trademark owners do not use the trademarks themselves, instead trademark owner authorise third parties which have business relationship with them to use the mark. In this respect Russian law does not prescribe for legal requirements imposing an obligation to use the mark exclusively on the trademark owner. The law indicates the mark can be used by a third party authorized based on the license or sub-license agreement, or other third party which uses the mark under the control of the owner. The latter often describe business or other contractual relationship between rightholder and the third party.

Circumstances beyond the rights holder's control

Although the use of the trademark is required, Russian law provides some exceptions for non-use. These are circumstances beyond the rights holder's control (i.e., force majeure or unpredictable political decisions), which may be used as a defence in the cancellation proceedings. The prime examples for such reasons may be a ban imposed state authorities to import goods into the territory of Russian Federation[26], purchase of expensive equipment which might entail unforeseen delay connected to significant financial expenses[27], inclusion to bankruptcy estate of exclusive right to trademark[28].

United Arab Emirates

The UAE Trademarks Law and Implementing Regulations (IRs) make little to no provision for evidence of use. For example, unlike other countries, the law is silent in respect of "evidence of acquired distinctiveness".

The IRs make provision for the examiner to require the applicant to "...file information that it considers necessary...", and so this information could take the form of information regarding the use of the mark to date, information on registrations elsewhere and so on. In the past where inherent registerability issues have been raised, the author has filed evidence of use of the mark in the UAE or elsewhere in order to attempt to overcome objections, which has assisted in overcoming the issues raised.

Generally, this information is provided by way of written submissions and supporting documentation. The UAE officials do not request affidavits, declarations or other such legal instruments. This is often the case with other countries in the region also, one of the main exceptions being Jordan, where notarised and legalised declarations are required to substantiate matters in opposition proceedings, for example.

Often before the UAE TM officials and the Trademarks Committee (the tribunal within the TMO which hears the first level of appeal from applications or oppositions), simple copies of these documents (such as registration certificates, advertisements, invoices, sales orders etc.) will be sufficient. If, for whatever reason, the authenticity of the documents is called into question then the trademark owner may be required to provide notarised copies of the documentation, legalised to the UAE Embassy where the documents emanate from outside of the UAE.

The filing of formal legalised evidence can be expensive, as each legalised document may cost up to USD 1,500 to attend to the notarisation, legalisation and local authentication. It is also important to note, that you may be required to translate the documentation into Arabic. This can also have a significant impact on overall costs. It is therefore key to try and use the most important documents, with the best evidential weight, rather than sheer weight of paper. To this end for some documents, such as decisions from other TMOs, or registration certificates, you may be able to consider translating the relevant aspects of each document (such as the specifications, or key paragraphs) to manage costs.

When it comes to court proceedings, then the need for legalisation is a near certainty for any documents issued outside of the UAE. For example, if you are trying to run a "well known mark" case and to support this you look to file many registration certificates from various countries, you will have to obtain certified copies of each certificate, then that document will need to be legalised to the UAE Embassy in the country of issue (then translated into Arabic). trademark owners can often spend significant amounts on supporting documents purely through legalisation and translation fees. As a rough guide, a trademark owner is likely to spend approximately USD 1,800-2,000 to legalise, authenticate and translate one 10 page document.

To try and manage costs as far as possible, when filing certificates, one can try and limit the certificates to the "home registrations" and one or two other key territories. These can be used together with a status report to demonstrate the scope of the company's global trademark rights.

In summary, care should be taken to identify and rely on those documents which will carry the most legal weight in UAE proceedings in order to best manage costs and assist your case in the UAE.

China

Non-use cancellation serves a very important role in China trademark practice. The legal ground for filing non-use cancellation is based on Article 49(2) of the Chinese Trademark Law:

Where a registered trademark becomes a generic name of the commodities for which it is approved or a registered trademark has not been used for three years consecutively without a proper reason, any organisation or individual may apply to the trademark bureau for revocation of the said registered trademark.

In terms of procedure, any party may simply file a non-use cancellation with the China Trademark Office (CTO) to demand deregistration/cancellation of the mark by stating that the mark has not been used for over three years from the registration date. The CTO often accepts the filing without requiring any additional evidence. Within two months from the acceptance of the case, the CTO will issue a notice of presenting evidence to the registrant, requiring the presentation of evidence of use of the trademark within two months. If the trademark registrant fails to provide evidence or otherwise the evidence is insufficient to prove the use of the trademark, the CTO may issue a decision to cancel the trademark registration. The decision of the CTO is subject to two levels of judicial review, by Beijing IP Court and Beijing Higher Court respectively.

In practice, proof of trademark use generally includes, but is not limited to, the following materials:

  • Products or product photos bearing the subject mark.
  • Product packages, or photographs of product packages, bearing the subject mark.
  • Product orders, sales contracts, relevant invoices, shipping documents, etc. For enhanced credibility, it is preferable that these documents are in a chain to show the consistency of each transaction.
  • Advertising materials featuring the subject mark such as advertisements, product catalogues, magazines, newspapers, exhibition attendance evidence, etc.
  • Evidence certifying the subject mark's fame such as awards.
  • If the mark has been authorised to be used by licensees, evidence of use of the subject mark by the licensees. In such a case, relevant license agreements should be provided as well.

To enhance the effectiveness of the documents, it is preferable that they form a chain of evidence. Ideally, the evidence of use should be quite substantial in order to avoid any risks of being cancelled on non-use grounds.

The following are examples of trademark use in association with goods:

  • the trademark is affixed to the goods, packaging of goods, containers, labels, etc., or applied to the appending labels, product description manual, introduction manual, price list, etc., by means of direct affixing, imprinting, stamping, or weaving, etc.;
  • the trademark is used in transaction documents relating to the sale of goods, including sales contracts, invoices, bills, receipts, quality inspection certificates, customs clearance bills, etc.;
  • the trademark is used in advertisements and promotions through media such as broadcasting, TV, printed publications, bill boards, mail advertisements, etc.;
  • the trademark is used in exhibitions or trade fairs.

Examples of trademark use on designated services include:

  • the trademark is directly used in the service premises, e.g. the introduction pamphlet, the receptions, the decoration of the premises, the clothing of the staff, posters, menus, price lists, lotteries, office stationery, letterheads, etc.;
  • the trademark is used on documents related to the services, such as invoices, bank documents, service contracts, after-sales maintenance certificates, etc.;
  • the trademark is used in advertisements and promotions through media such as broadcasting, TV, printed publications, bill boards, mail advertisements, etc.;
  • the trademark is used in exhibitions or trade fairs.

This article is only a brief overview of the nature of evidence of use in Canada, the United Kingdom, France, Germany, Russia, Singapour, the UAE and China. If you would like to discuss anything discussed in this article or other related issues, please get in touch with the team.

Footnotes:

[1] Pursuant to articles L.711-4, L.712-4 and L.713-5 of the French code of intellectual property (CIP), implementing Article 6bis of the Paris convention, the owner is entitled to file opposition, infringement or invalidity proceedings against a later identical or similar sign used for identical or similar goods and services.
[2] First Instance Court of Paris, January 26, 2018, n° RG 15/10030. French Office, January 30, 2018, n° OPP 17-4339/MAS
[3] Paris Court of Appeal, December 15, 2017, n°17/00728
[4] French Supreme Court, November 9, 2010, n°09-13.144
[5] French Supreme Court, June 9, 2009, n°08-16.333
[6] Paris, Court of First Instance, June, 9, 2016, n° RG 15/14047
[7] Paris, Court of First Instance, January 8, 2016, n° RG 13/16629
[8] French Supreme Court, September 24, 2013, n°12-22.966
[9] French Supreme Court, January 31, 2012, n°11-14.317
[10] Contra French Supreme Court, June 8, 2017 (n°15-22.792)
[11] Paris, Court of First Instance, January 16, 2018, n° 16/12117; French Supreme Court, January 29, 2013, n°11-28.596
[12] French Supreme Court, July 5, 2017, n°13-11513
[13] French Supreme Court, September 15, 2015, n°14-19.497
[14] Paris, Court of First Instance, January 16, 2018, n° 16/12117; Court of Appeal of Paris, December 21, 2012 ; March 1, 2013
[15] except where the sign is exclusively constituted by the shape imposed by the nature or function of the product
[16] Paris, Court of Appeal, February 27, 2018, n°16/14398
[17] Paris, Court of Appeal, January 30, 2013, n° RG 11/01355; Court of Appeal of Paris, February 20, 2018, n° RG 17/06661
[18] ECJ September 3, 2015, C-125/14 ; ECJ September 14, 1999, C-375/97
[19] Paris, Court of First Instance, October 20, 2017, n° RG 16/06940
[20] Paris, Court of Appeal, March 9, 2018, n° RG 16/24260 ; ECJ September 3, 2015, C-125/14 ; ECJ September 14, 1999, C-375/97
[21] Bordeaux, Court of First Instance, June 8, 2017, n° RG 16/08874
[22] The Russian Federal Service for Intellectual Property, commonly known as Rospatent is a Russian governmental agency in charge of intellectual property
[23] Decree of Federal Antimonopoly Service of Moscow region dated May 12, 2013 in case №А40-65329/12012-299;
[24] Decree of Federal Antimonopoly Service of Moscow region dated July 07, 2011 №KA-A40/6709-11 in case №-A10-102665.10-15-871
[25] Decree of Presidium of Supreme Arbitration Court dated June 29, 2011 №8817/11 in the case №А40-103027/10-12-654
[26] Decree of Federal Antimonopoly Service of Moscow region dated April 23, 2013 in case №A40-85638/12-15-66;
[27] Decree of Federal Antimonopoly Service of Moscow region dated April 26, 2012 in case №A40-60984/11-5-377;
[28] Decree of Presidium of Intellectual property court dated April 02, 2014 in case №SIP-247/2013


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