Defending non-use trademark cancellation actions

Amanda Yang and Cindy Kang

[email protected] and [email protected]

The CTMO's decision comes first and is particularly important. It can take between two and four years to have an unfavourable CTMO decision overturned and, in the meantime, the decision can attract considerable media attention in the mistaken belief that it is a final decision. Such reporting can damage both the image of the trademark owner and the reputation of the brand. It is, therefore, crucial to seek to defeat a non-use cancellation action at the CTMO stage.

In practice, the CTMO considers that the strongest evidence of use is the official sales receipt issued to a consumer by the registrant or its distributor. It generally considers other evidence relatively weak, although some examiners may accept as sufficient a complete evidence chain e.g. from licence or distributor agreement, through to customs documentation (for imported goods) and order and payment documentation. Even if we cannot change the CTMO's approach, we should at least be as familiar as possible with its preferences and requirements. Here are some tips for your guidance.

Subclasses

China adopts a subclass system, dividing each class of goods or services into several subclasses. Generally, only goods or services falling into the same subclass will be regarded as similar, even though, in practice, goods or services falling into different subclasses may be closely related. One of the most popular examples is that clothing is in subclass 2501, while gloves are in subclass 2510, and scarf is in subclass 2511. If we have a registration in class 25 in relation to clothing (in subclass 2501) and scarves (in subclass 2511), a non-use cancellation action in relation to both would be defeated at the CTMO by the production of valid evidence of use in one subclass only. At the TRAB stage, however, to defeat such a non-use cancellation action, it would be necessary to submit evidence of use in relation to the designated goods within each subclass. Courts adopt the same approach as the TRAB.