People have generally thought of China as a first to file
country in the area of trade mark protection. Filing and
registration of trade marks are emphasised in the jurisdiction.
However, new trade mark law that came into force on May 1 2014
shed more light on trade mark use. Trade mark use, if not
fundamental in China, is becoming more and more important and
may be even more significant in the future.
Use is not a precondition for registration
In China, use of a mark is not a precondition for
registration. However, Article 4 of Chinese trade mark law
states that "any natural person, legal person, or other
organisation that needs to acquire the right to exclusively use
a trade mark on the goods or services thereof in the course of
business operations shall apply to the Trademark Office for
trade mark registration." Though use is not a precondition for
registration of a trade mark in China, this provision implies
that the applicant should have the need and intention to use a
trade mark or service mark.
What constitutes use of a trade mark?
According to Article 48 of trade mark law, "trade mark use
refers to the use of a mark on commodities, packages or
containers of merchandise and commodity trading instruments, or
the use of marks in advertisements, exhibitions and other
commercial activities for the purpose of identifying the source
of the goods." For service marks, the law does not provide a
separate definition, but according to Article 4, "the
provisions of this law regarding trade marks are applicable to
service marks as well." So, in a similar way to the definition
in other jurisdictions, a trade mark or service mark should be
used in commerce and the marks should perform the function of
identifying the origin of the goods/services.
Trade mark use in China
1. A prior used mark may exclude registration of another
party's application for the same or similar mark on the same or
According to Article 32 of the country's trade mark law, if
a party uses a mark for a period of time and has acquired a
reputation using it, the prior used mark may be able to prevent
another party's application for the same or a similar mark on
the same or similar goods.
2. A prior used mark may exclude another party's
application for the same or similar marks for the same or
similar goods/services filed the same day but without use or
If two or more parties file the same or similar marks on the
same day for the same or similar goods/services, the party who
uses the mark first will get the mark.
3. Use of a registered mark is able to maintain the
registration in non-use cancellation cases.
As a mechanism to eliminate unused trademarks, according to
the law, if a registered mark stops being used for over three
years, any party may file non-use cancellation against the
mark. Effective use evidence will be able to maintain the
4. Prior use of a mark may be used as defence in a trade
mark infringement action.
If a trade mark infringement action is brought by a trade
mark registrant, use of the mark by another party prior to the
application date of the registered mark can be a defence, and
the user of the trade mark may continue using the mark in the
same scope with an additional identifier added, if
5. Use of a registered mark is a basis for claiming
damages in trade mark infringement actions.
In trade mark infringement actions, if the defendant asserts
that the registrant is not using the mark, the court may
require the registrant to submit use evidence for the last
three years. If the registrant cannot submit evidence to prove
its use of the mark, it is not entitled to damages as the court
takes the view that no losses have been caused.
Issues, recent developments and the future
As a major part of the trade mark protection system in
China, the Trademark Office and its higher level administration
the State Administration for Industry & Commerce (SAIC)
have realised an important problem needs to be solved urgently.
This is that potentially only a small portion of existing marks
are in actual commercial use. One of the problems is that these
existing marks will block new applications where the trade mark
is intended for use. Currently, about one third of new
applications are refused for registration, and many of the
refusals are due to prior marks. Another serious problem is
that many marks are held by trade mark dealers. They register
the marks for sale or even for blackmailing the real brand
An article entitled SAIC Opinion on Deepening the Reform of
Trademark Registration and Enhancing the Efficiency of
Trademark Registration just released by the SAIC on November 17
2017 mentions that to solve this problem, the Trademark Office
is studying the possibility of requiring use evidence at a
certain point after registration of a mark, or at the time of
renewal for the next step amendment of the law, with the hope
of increasing the cost of maintaining a trade mark registration
that is not in use or making it impossible.
|Lily C Lei
Liu Shen & Associates
10th Floor, Hanhai Plaza
10, Caihefang Road,