“Use” in Trademark Revocation System related to “Cease to be Used”

The main function of trademark is to identify the manufacturer or seller of goods, symbolize the commercial value and quality of goods, and etc., which requires the manufacturer or seller to use it. So “Trademark Law” has regulated those “Cease to be Used” trademarks. “Trademark Law” Article 49 has stipulated that without a reasonable reason, if the user has not used the registered trademark for an uninterrupted period of 3 years, any units or individual shall have the right to apply to the Trademark Officer for relocating this registered trademark. However, what dose “Use” mean for a trademark, how to identify whether the trademark has been used in the judicial practice, these issues are very important for Trademark Revocation System related to “Cease to be Used”.

For the “Use” of trademarks, the “Trademark Law”(amended in 2008) has not given a word, but ” Implementing Regulations of Trademark Law”, Article 3 has stipulated that the use of trademarks refers to affixing trademarks to commodities, commodity packages or containers as well as commodity exchange documents or using trademarks in advertisements, exhibitions and other commercial activities. This provision has stipulated some specified circumstances and the miscellaneous ones, but it fails to stipulate the aim of “Use”, which means it has not excluded “Token Use” (use the registered trademark only on a small quantity commodities or for a few times within several years) from the scope of “Use”. Therefore, in the practice, some user may create “Use” to fulfill the requirements of laws and regulations by selling some commodities with trademark, or using trademark in commercial occasionally.

For such cases, local courts would take “Use” as the necessary condition by interpreting the function of “Use”, and deny “Use” of the relevant trademark by holding that the sale is lack of evidence (e.g. lack of corresponding invoice and etc. ), or the commercial is only a report of defending right. And we could hardly find the judgments, in which deny “Use” of the relevant trademark by apply the function of “Use” directly.
The newly amended “Trademark Law” Article 48 has stipulated that the use of trademarks refers to affixing trademarks to commodities, commodity packages or containers as well as commodity exchange documents or using trademarks in advertisements, exhibitions and other commercial activities, which shall be deemed to identify the resource of the commodities. This provision has stipulated the aim of “Use”, which means such “Token Use” shall be denied, deemed as failing to meet the requirements of “Use”, and the registered trademark may be revoked.

Secondly, there are 2 issues shall be paid attention to in practice on “Use” of trademark: (1) Whether there are special regulations on “Use” of a well-known trademark? If the well-known trademark has not been used in all registered categories, whether the well-know trademark registered under those “Cease to be Used” categories shall be revoked? (2) The owner registers a trademark of many commodities under 1 category, if the owner fails to use the trademark of some of the said commodities, whether the trademark of those “Cease to be Used” commodities shall be revoked?
For the 2 issues hereinabove, the current laws and judicial interpretations have not given a word. However, we can find some rules on such issues based on relevant judgments. Here are 2 examples for your reference.

In Guangdong Apollo Group v. Trademark Appeal Board, the judgment of Beijing Intermediate People’s Court states, “Although Apollo has registered trademark No. 323481 on tonic soft drink and other commodities under category 32, and the registered trademark is a well-known trademark, which compounded with the same “APOLLO” characters and drawn as the appealed trademark. The well-known trademark and the appealed trademark are registered for different commodities. Trademark Law and relevant laws and regulations have not stipulated special rules for well-known trademarks on trademark revocation system related to “Cease to be Used” for an uninterrupted period of 3 years. Which means that the current laws and regulations have not said “Cease to be Used” for an uninterrupted period of 3 years should not be applied to well-known trademarks, neither applied to the appealed trademark when it has the same symbol as the registered trademark under other categories, and such registered trademark was deemed as well-known trademark. So Apollo advocates that the registered trademark No. 323481 is a well-known trademark, which is irrelevant with this case. Apollo advocates that the protection scope of well-known trademarks shall include the appealed trademark, which is lack of legal basis, the court would not support this.” In view of this case, for the first issue, there would be no special rules for well-known trademark.

In Capital Bio Corporation v. Trademark Appeal Board([2008] Gao Xing Zhong Zi No. 334), the final judgment of Beijing Intermediate People’s Court states, ”Before the implementation of Implementing Regulations of Trademark Law, neither Trademark Law nor Implementing Rules of Trademark Law have stipulated that if the registered trademark has not been used in all the registered categories for an uninterrupted period of 3 years, the registered trademark under those “Cease to be Used” categories shall be revoked. According to Implementing Rules of Trademark Law, Article 29, Should the registrant fail to furnish proof of use by the expiration of the specified period， or said proof is invalid, the Trademark Office shall revoke the registered trademark. This provision has not specified where the registered trademark has not been used in all the approved commodities, should the registered trademark be revoked on all the commodities or not. When there are several interpretations of laws and regulations, the restriction interpretation shall be applied.” This case happened before the implementation of Implementing Regulations of Trademark Law, and the court supported Capital Bio. However, upon the Implementation of Implementing Regulations of Trademark Law, according to Article 41, if the reasons of the Trademark Office or Trademark Appraisal Committee for revoking a registered trademark concern only some of the designated commodities, the registered trademark that is used on this part of designated commodities shall be revoked. Which means that the trademark “Cease to be Used” for an uninterrupted period of three years concern some of the designated commodities, these trademark shall be revoked.

To sum up, in principle, trademark shall be used on the registered commodities. However, in practice, the application on revoking trademarks on some of the designated commodities is rare, and the applicant may submit application on revoking trademarks under the specified categories. Therefore, the possibility of applying on revoking trademarks on some of the designated commodities is relatively low.