Based on non-use for three consecutive years, Singapore Health First Co., Ltd. filed an application for cancellation of the mark “GNC” No. 1129187 in respect of the ods "nutritive fish oil, not for medical purposes" in Class 30, which was registered by Jiangsu Province Materials Group Economic and Trade Development Co., Ltd. (the “Materials Group Company”).
After the adjudication on opposition made by the TMO (the Trademark Office), the adjudication on review of opposition by the TRAB (the Trademark Review and Adjudication Board) and the judgment by Beijing First Intermediate People's Court, an appeal was finally made to Beijing Higher People's Court (the "Higher Court"). It was held that the packaging box and handbag printed with the mark “GNC” provided by Materials Group Company were both used on honey, etc products from bees rather than on the ods "nutritive fish oil, not for medical purposes" covered by the subject mark, and it was not the “use” as referred to in the Trademark Law. Higher Court ruled that the mark “GNC” No. 1129187 had not been used for three consecutive years and hence the registration shall be cancelled.
Analysis – How to provide evidence of trademark use
In the examination of the cancellation application based on non-use for three consecutive years, the TMO/TRAB mainly followed, as to the examination of the evidence of use provided by the registrant, the provisions of Article 3 of the Regulations for the Implementation of the Trademark Law that: “The use of a trademark shall include the use of the trademark on ods, packages or containers of the ods or in trading documents, and the use of the trademark in advertising, exhibition or any other business activities. The evidence of trademark use includes the evidence of use of the registered trademark by the trademark registrant and the evidence of licensing another person by the trademark registrant to use its registered trademark.”
The use of a trademark is generally in the following specific forms:
1. The use of the trade mark on ods, packages or containers of the ods or in trading documents includes:
a) The use of the trade mark on the outer packaging, containers or labels of ods, affixed signs, products manuals, products brochures, etc;
b) The use of the trade mark in trading documents related to the sale of ods, including sales agreements, invoices, bills, receipts or documents of ods, quarantine certificate or customs declarations for import and export of ods.
2. The specific forms of the use of a service mark include:
a) The direct use on services, including the use in services brochures, services place decorations, posters, menus, registration certificates, price lists, check forms, registration cards, lotteries, trade signs, remittance documents, stationery, letter papers and other supporting equipments and so on.
b) The use in documents related to services, including invoices, shipping bills, souvenirs, services agreements, etc.
3. The use of a trademark in advertising or exhibition includes the following specific forms:
The advertising on or by radio, television, magazines, newspapers, billboards, direct mail advertising, etc advertising media or form (the publication of newspapers and magazines shall be approved by the press and publications authority) for the ods or services on which the mark was actually used.
The use of the trademark in exhibitions includes the provision of the printed materials, photos and other materials on which the trademark was used at the exhibitions (the exhibitions shall be approved by the relevant vernment departments at all related levels).
The use of the trademark in Trademark Gazette, legal documents, registration information publication, news and media reports shall not be construed as the use in business activities. The trademark modification, assignment, renewal of registration and other kind of non-business use shall not be deemed as the actual use of the trademark.
Note: Without other valid evidence to corroborate, the advertisement, licensing agreement, assignment and so on shall not stand alone as the basis to determine the use of the trademark.
Relevant laws and regulations
It is provided for in Article 44.4 of the Trademark Law of the People’s Republic of China that: “Where the registered trademark has ceased to be used for three consecutive years, any person may apply for the cancellation of such registered trademark. The trademark registrant shall, within two months from the date of receipt of the notification, provide evidence of use of the trademark prior to the submission of the application for cancellation. If, at the expiry of the time limit, no evidence of use is provided or the evidence provided is invalid and there are no proper reasons for non-use, the Trademark Office shall cancel the registered trademark.”
