Trademark registrants are obliged to keep their registered trademarks in use on a standardised and continual basis, and maintain the distinctiveness of their registered trademarks. However, this could be a challenge for trademark holders owning a good number of registered trademarks.
Under the Criteria for Trademark Examination, Review and Adjudication of the PRC, trademark use refers to the commercial use of a trademark, including the act of using the mark on goods, product packaging or containers, and commercial transaction documents, or in advertisements, exhibitions and other commercial activities, to distinguish the origins of goods. The author has found four common problems in trademark use.
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Inaccurate description of the name of trademark holder or licensee. This problem often occurs in transnational or large corporations with complex organisational structures, which usually have their IP registered in the parent company’s name, and the use of their trademarks is delegated to their subsidiary companies. In a corporation with too many subsidiaries, sometimes the in-house personnel may not know the accurate names of the legal persons of all its subsidiaries, and the company names on evidential documents are the established forms of addressing the corporation internally instead of the registered names of legal persons.
Unauthorised change of registered trademark. This refers to a trademark holder’s taking the liberty of changing a word or character, letter, numeral, 3D shape, colour combination, etc., of a trademark, which changes the main part and distinctive features of the mark, resulting in unrecognised use of the mark. There are many reasons for trademark change. The common case of non-standardised use of trademarks includes using the components of a mark separately and changing the font, colour, word or character of a mark. All these cases are liable to lead to a radical change of a mark’s distinctiveness.
“False” lack of evidence of trademark use. To differentiate between the positions of goods and brands, corporations formulate their trademark strategies as per adopting the classification of main trademarks, sub-marks, or even sub-submarks. However, it is not easy to preserve the evidence of using all their marks. For example, it is usually difficult for a trademark handler to list all relevant trademarks on the sales contracts, invoices or other formatted documents. Only main trademarks are listed on some contracts, or, fortunately, sub-marks are also listed. This leads to a situation in which the true use of some sub-marks cannot be reflected in sales documents. Common and grave problems about trademark use also exist with invoices. Many invoices only bear the name of goods, but lack trademarks.
Lack of the date of trademark use. Many marketing materials usually lack the date when the materials or evidence start to exist. Copyright statements, like (C)2021, might be necessary to demonstrate the rough dates of their existence and that physical stores be photographed along with a newspaper of the target day to preserve evidence of time.
Standardised use of trademarks
Concluding IP licence agreements and getting trademark licences recorded when necessary. When trademark use is licensed by its holder, it is important to conclude a licence agreement with the licensee. Trademark holders should make the licence for major trademarks recorded for the Trademark Office to issue a recordal notification that is authoritative and generally accepted.
Giving regular staff training in standardised use of trademarks. The in-house IP department of a company plays a leading role in making standardised use of the company’s trademarks. The IP professionals are responsible for exploiting all resources to provide regular training to help staff members acquire knowledge and practice of trademark use.
Preparing guides to trademark use to instruct staff members in standardised use of trademarks. The larger a company is, the more elaborate its division of labour. Different departments have different IP awareness and knowledge. Trademark use, however, is a common task for all departments. The IP department is responsible for preparing a guide for other departments, encouraging or requiring them to make standardised use of trademarks.
Regularly collecting evidence of trademark use and unifying trademark preservation and management. The IP department should collect and preserve the evidence of use of major trademarks regularly, and unify the management of the bank of trademark use evidence to review the standardised use of trademarks.
Non-standardised use of trademarks does not necessarily result in loss of trademark rights, as a defence may be mounted by developing an evidence chain. However, it creates uncertainty for the management of registered trademarks. Trademark holders should make standardised use of trademarks to safeguard the basic rights of their brands.
Christy Chen is a partner at Corner Stone & Partners
Corner Stone & Partners
1905, Tower B, Tian Yuan Gang Centre,
No. 2 Dongsanhuan North Road, Chaoyang District,
Beijing 100027, China
Contact details:
Tel: +86-10-84464600
Email: christy.chen@cornerstoneip.com.cn
www.cornerstoneip.com.cn
