It’s regulated in China Trademark Law that when the registered trademark is ceased for use for three consecutive years, the trademark office shall order him to rectify the situation within a specified period or even cancel the registered trademark. And the understanding on the ceased use is the most consulted question to us. In fact, such article was once referred in the administrative adjudication made by the Supreme People’s Court of China, and that may help us in understanding the article.
On 17th, December, 2011, the Supreme People’s Court of China judged on the retrial of the lawsuit on trademark cancel filed by CASTEL FRERES against the Trademark Review and Adjudication Board and Li Daozhi, refusing CASTEL FRERES’s application on retrial. And the reasons are as follows:
Once a registered trademark is put aside for a long period, it not only fails to function as a mark, but also hinders other’s registration or using of the mark, which may influence the normal work of the trademark system. Therefore, it’s provided in item 4 of Article 44 of the Trademark Law that the trademark office shall order to rectify or cancel the registration in certain period shall a trademark is ceased for using for consecutive three years. What deserves your attention is that the purpose of the article is to activate the trademark resources and to clean the idle resources, with the cancellation just are the method to fulfill this purpose. Therefore, once the trademark is used publicly and truly for the commercial purposes, and the trademark registration is not against the trademark laws and regulations, the obligator is seemed to have fulfilled the obligation, and the trademark is not necessarily determined violating the regulations. In this case, Li Daozhi submitted a contract in which Li Daozhi authorized PANATI Wine Co., Ltd (“PANATI”) to use the controversial trademark and the VAT invoices drew by PANATI on sales of ‘卡斯特’ wine during the trial, and submitted more than 30 selling invoices and relating import references of CASTEL wine during the retrial. Base on the above evidences, PANATI had already been proved that it had used the controversial trademark in the commercial activities truly and publicly. So the controversial trademark does not belong to the situation of “being revoked or ordered to be corrected within a time limit by China Trademark Office, if the trademark had not been put into use for 3 consecutive years” which regulated in the 4th paragraph, Article 44 of China Trademark Law. As for whether the other acts of PANATI using the controversial trademark during course of business can violate laws about sales and import is not the objective ruled and adjusted by the 4th paragraph, Article 44 of China Trademark Law. ”
In our past post “How to Protect the Angry Birds Brand in China ?”, we have made recommendations to the those companies operating in China to apply for the trademark as more as possible, including the translation name, homonyms and synonyms, and also to extend the applying classes, however, the regulatory ceased use for consecutive three years may be the obstacle to the suggested method. Therefore, in our opinion, it could be concluded that the understanding on the ceased using shall not limit to the active claiming of the proprietary right, while the obligation could be seem as fulfilled when the trademark is used in commercial activities. So needless to say, the clever reader will prepare the evidence in accordance with the adjudication
Finally, we would like to pay gratitude to Prof Zhang Weijun for the reference to his blog in this article.
For more posts on our website, please refer to the following articles:
1. How to apply for the trademark registration in China?
2. How to apply for the trademark record in China custom?
3. How to improve the success rate of trademark registration in China?
4. How to handle the trademark refusal?
5. How to renew the trademark in China?
Author: Mr. Huang Mengren
Paralegal of DeBund Law Offices
Introduction on the Founder & Editor-in-Chief of Bridge IP Law Commentary:
Co-author: Mr. You Yunting
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.