Entering into 2022, China National Intellectual Property Administration released new Guidelines for Trademark Examination and Trial which slightly revised the previous Guidelines.
Regarding examination and trial on non-use cancellation cases, the adjustments in the Guidelines mainly include:
1. Examination on the goods:
Ø For a registered mark attacked based on a claim of three-year non-use, the Guidelines explicitly require the use on the specifically designated goods. Valid use evidence on one or a part of the designated goods may maintain the registration for other similar goods/service according to China’s Classification of Goods/Services.
Ø In some circumstances, the goods actually in use are not identical with the goods designated in registration. In such case, the new Guidelines indicate that if the goods in use do not belong to any standard descriptions according to China’s Classification of Goods/Services, while the goods in use and the goods as designated and registered are the same in essence, or the goods in use belong to a subcategory of the goods as registered, the actual use evidence may be recognized as valid use.
Ø Due to changes of China’s Classification of Goods/Services from time to time, the new Guidelines also indicate that if the goods as registered and the goods in use belong to similar goods/services according to China’s Classification of Goods/Services either at the time of trademark approval for registration or examination on non-use cancellation case, the actual use evidence can maintain the registration for goods similar but without specific evidence of use.
2. Use of trademark by OEM
The new Guidelines specifically recognize the use evidence of OEM use as valid use evidence.
3. The following situations cannot be regarded as trademark use based on the Chinese Trademark Law:
Ø Publication of the trademark registration information or the statement issued by the trademark registrant on the exclusive right to its registered trademark;
Ø Lack of use in public commercial fields;
Ø Use of the registered mark by changing its main part and distinctive characteristics;
Ø Only transferring or licensing without actual use;
Ø Symbolic use only for the purpose of maintaining trademark registration.