Determination of the use of trademark under "Multiple Trademarks Owned by the Same Person" in a Case of Non-Use Cancellation for Three Consecutive Years

According to the relevant provisions of Chinese Trademark Law, the trademark registrant should actively and properly use their registered trademark. If a registered trademark has not been used for three consecutive years without justified reason, any one can request to cancel this registered trademark. This policy is established to encourage trademark registrants to actively and properly use their registered trademarks, ensuring that trademarks, as a limited resource, are allocated and utilized reasonably. Therefore, trademark registrants should actively and correctly use their registered trademarks for actual, effective and legal commercial use, otherwise they will face the risk that their registered trademarks may be cancelled.

In principle, a registered trademark should be used exactly as it is registered. In actual use, for commercial purposes, registrants may modify their registered trademarks to a certain extent. Whether such modifications will affect the validity of the registered trademark is a common concern among rights holders.

The relevant judicial interpretations of the Supreme Court stipulates that if the actually used trademark is slightly different from the registered trademark, but its distinctive features have not been changed, it can be deemed as the use of a registered trademark.

The purpose of the above provisions is that, due to the needs of actual business activities, such use that does not change the distinctive features of a registered trademark should also be deemed as use of the registered trademark. For example, minor changes to a registered trademark on the original basis are allowed.

This article mainly discusses a special situation in cases of non-use cancellation for three consecutive years, that is, how to determine use evidence in the cases involving “multiple trademarks owned by the same person”.

1. Use of trademark under "multiple trademarks owned by the same person"

"Multiple trademarks owned by the same person" refers to the situation where the registrant owns multiple registered trademarks, one of which is requested to be cancelled due to non-use for three consecutive years, and the trademark as use evidence provided by the registrant is not clearly and uniquely correspondent with the trademark being requested to be cancelled, but may be same as or similar to other registered trademarks in the name of the registrant.

For example, the trademark registrant has applied for the registration of both a plain text "A" trademark and a designed "A" trademark in Class 25 for identical goods. If a third party files a non-use cancellation against the designed "A" trademark and the registrant provides evidence such as contracts and invoices that may indicate the use of another plain text "A" trademark. Under these circumstances, whether such evidence for plain text trademark should be recognized as the use of the designed trademark being requested to be cancelled becomes a focal point of dispute.

Pursuant to the judicial interpretations of the Supreme Court, if the actually used trademark is slightly different from the registered trademark, but its distinctive features have not been changed, it can be deemed as the use of a registered trademark. This can be used as the basic principle for the determination of trademark use.

However, regarding the situation of “multiple trademarks owned by the same person”, the relevant judicial interpretation of the Beijing Higher People's Court clearly stipulates that for a disputed trademark registrant who owns multiple registered trademark, if it can be determined that the actual use of trademark is directed towards other registered trademarks owned by the registrant, even though there are only slight differences between the actually used trademark and the disputed trademark, the claim to maintain the registration of the disputed trademark may not be supported. This judicial interpretation provides a more stringent determination standard for trademark use for the situation of "one person with multiple trademarks".

The current judicial rulings generally follow the aforementioned guiding principles, taking into account the situation of other similar trademarks owned by the trademark registrant, to determine whether the evidence provided can be deemed as the trademark registrant’s use of the disputed trademark within the specified term. If the use evidence is clearly directed towards other registered trademarks, in principle, the registration of the trademark in dispute will be cancelled.

2. Determination of use for "multiple trademarks owned by the same person"

It can be seen from the study of relevant cases that the court adopts relatively strict determination standards on this issue.

For instance, in the second-instance administrative judgment ((2019) Jingxing No. 5932), the Beijing Higher People’s Court rules that the evidence provided by Sheng Yaqi Company (the third party in the first instance) in this case such as cooperation agreements, store renting contracts, invoices and photos all show the word mark“CARLI”or the sign“CARLI” in a dark background. In view of the CARLI trademark No. 6103451  registered on clothing and other goods by Carally Company (the third party in the first instance), it can be determined from the evidence in this case that the use shown in the evidence in this case is directed to other registered trademarks, and cannot be deemed as use of the trademark No. 686918 in dispute . Based on the evidence in this case, the evidence submitted by Sheng Yaqi Company and Carally Company (the third party in the first instance) cannot form an evidence chain and cannot prove that the trademark in dispute has been legally, genuinely and effectively used for commercial purposes on the designated clothing goods within the specified term.

In judicial practice, however, the above provisions are not applied simply and mechanically. Especially when the evidence provided by the right holder is not clearly directed to the disputed trademark nor to other trademarks under their name, a comprehensive consideration will be given to other factors, such as  the specific circumstances of other registered trademarks they own, whether there is a genuine intention to use, business practices, consumer perception.

For example, in the administrative judgement for a dispute case of cancellation review (2020) (Jing 73 Xing Chu 835), Beijing Intellectual Property Court held that the disputed trademark consists of the Chinese characters "富丽真金" and its corresponding pinyin "FULIZHENJIN". Although some evidence of use only showed "富丽真金," which has slight differences compared to the disputed trademark, it did not alter the core identifying elements of the disputed trademark and can be deemed as the use of the disputed trademark. The plaintiff claimed that a third party held another trademark "富麗真金" registered under No. 19861568. However, the registration date of that trademark is June 21, 2017, while the prescribed use period in this case is from May 25, 2015, to May 24, 2018. Therefore, the plaintiff's assertion that the evidence of the third party's use during the designated term is based on the use of the trademark under No. 19861568 lacks factual basis. The court did not uphold it.

3. Pay attention to trademark use and evidence retention

In trademark cancellation cases, the determination of trademark use ultimately depends on whether the user subjectively has a genuine intention to use the trademark and whether the actual use behavior objectively establishes a connection between the trademark and the goods or services it identifies for the relevant public.

Therefore, trademark owners should actively and properly use their registered trademarks on the designated goods or services. They should continuously sell goods or provide services to establish the recognition of the relevant public of the registered trademark as the source of the goods or services. At the same time, it is important to pay attention to the regular collection and long-term preservation of evidence of trademark use in commerce.

If the rights holder has registered multiple similar or related trademarks on the same or similar goods, due to the court’s relatively strict standards on the use of evidence for "multiple trademarks owned by the same person", it is essential for the operators to consciously differentiate their trademarks from each other, and use them in the same forms as registered respectively in production and/or business activities, and also to preserve evidence of the use for each trademark. This will help avoid the risk of having the registered trademark cancelled due to the use evidence directing to other related trademarks.

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