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1. What is the legal effect for not using a registered trademark?
According to the provisions of Article 44, if a registered mark has been ceased to be used for three consecutive years, any party may file for a cancellation of the mark with the CTMO. If the registrant fails to provide valid evidence of use, or provide acceptable reasons for non-use, the CTMO shall cancel the registered trademark.
2. What is valid evidence of use?
Use of the registered mark by the trademark registrant, and use of the mark by the licensee granted by the trademark registrant are considered valid evidence of use, e.g.:
a. Evidence showing the use of the trademark on goods, packages or containers of goods (indicating the time and area of such use);
b. Materials indicating the use of the trademark in commercial advertisement or exhibitions;
c. Materials indicating the use of the trademark in business activities, i.e. the trading documents reflecting the date, trademark and goods (invoices, contracts, custom declaration, etc.);
d. Other materials showing the use of the registered mark in actual commerce.
3. Can a registered trademark designating color be used in black and white?
According to the provisions of Article 44, the trademark registrant must use the mark exactly as registered. Changing the registered mark is not allowed. Using a registered trademark designating color in black and white, it shall be considered altering the registered trademark. In this case, the CTMO may order for rectification, or, if it is serious enough, the CTMO may cancel the registered mark.
4. Whether a trademark registered in simplified characters can be used in for traditional characters, or vice versa?
According to the relevant provisions of Chinese Trademark Law, the exclusive right to use a registered trademark is limited to the trademark that has been approved for registration, and the registrant is not allowed to change the registered mark unilaterally. If the trademark is registered in simplified characters but traditional characters are used in actual commercial activities, or vice versa, it will be considered altering the registered trademark. The CTMO may then order for rectification, or, if it is serious enough, the CTMO may cancel the registered mark.
5. Whether a trademark registered in plain Chinese characters can be used in stylized form? Does this constitute altering the registered trademark?
According to the relevant provisions of Chinese Trademark Law, the exclusive right to use a registered trademark is limited to the trademark that has been approved for registration, and the registrant is not allowed to change the registered mark unilaterally. If one registers a trademark in plain Chinese characters but uses the characters in stylized form, this constitutes altering the registered trademark, and the CTMO may order for rectification, or, if it is serious enough, the CTMO may cancel the registered mark.
Moreover, if the mark is used in a stylized form that has changed the entire appearance of the mark, there also exists risk that the mark has become similar to other party’s registered trademarks, and therefore constitutes trademark infringement.
6. If a mark is registered in plain upper case letters, but is used in stylized lower case letters, is this regarded as a valid use of the registered trademark?
If a trademark is registered in plain upper case letters, but actually used in stylized lower case letters, the actual appearance of the trademark has been changed. However, in practice, if it can be easily identified that the actually used mark in stylized lower case letters contains the same letters as registered in upper case letters, it can be considered a valid use of the registered trademark. However, if the stylized lower case letters have changed the entire appearance of the trademark, there exists the risk that the mark has become similar to other registered trademarks, and therefore constitutes trademark infringement.
7. If the trademark registrant only uses the registered trademark on some goods as registered, whether it has constituted “cease to use for three consecutive years” of the mark on the goods which have not been used?
The provisions of Article 44 (4) do not clearly indicate whether “the cease to use for three consecutive years” refer to all goods as registered or only some. In practice, if any party files a cancellation based on non-use against a registered trademark in connection with all goods as registered, the evidence of use of the mark in connection with some goods as registered shall be regarded as valid, which are sufficient to maintain the whole registration. However, if the non-use cancellation is filed only in connection with some registered goods, the registrant must provide evidence of use of the trademark in connection with the particular goods. The evidence of use of the mark in connection with other goods shall not be regarded proving use of the mark in connection with the goods associated with the non-use cancellation proceeding.
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