What is the definition of “evidence of use” in the trademark law of Russia and China?

Although the concept of use appears frequently in trademark law, there may be regional variations in how it is presented. The focus of this article will be on how it may be established and demonstrated in Russia and China at different phases of a trademark’s validity period.

Evidence of use in Russia

The concept of trademark compulsory use is defined in Russian law. If you don’t follow these rules, you run the risk of having your trademark terminated early due to non-use. Article 1486 of the Russian Federation’s Civil Code governs early termination. The trademark’s legal protection may be revoked early in respect of all or part of the products or services if the trademark has not been used for three years from the date of registration, according to the applicable regulation.

After the three-year grace period has expired, any interested party who believes the right holder is not using the mark in respect of all or part of the products may submit a non-use cancellation claim with the Russian Federation’s Intellectual Property Court. Before filing a non-use cancellation claim, the interested party must approach the trademark owner with a preliminary proposal to either willfully cancel the trademark registration or designate the trademark right to the interested party, according to recent changes in Russian law that took effect on July 12, 2017. A non-use cancellation claim can be brought with the court within 30 days of the two-month term from the date of submitting the proposal expiring.

As a result, in order for a trademark to be canceled earlier, two requirements must be met:

1. The claim is filed by an interested party;
2. The trademark has not been used for three consecutive years.

The claimant has the burden of proving a valid interest in the trademark’s cancellation, while the defendant must show that the trademark was used in the three years prior to the non-use cancellation filing date. In a non-use cancellation procedure, the trademark owner must demonstrate true commercial use of the brand in Russia, which may include activities connected to civil turnover and factual use of the trademark in relation to the products or services stated in the trademark registration. Both criteria are self-contained and distinct grounds for accepting or rejecting a claim. We’ll continue our investigation into what constitutes proof of usage in Russia’s non-use cancellation procedures.

What is the definition of “evidence of use” in Russia?

In terms of statutory law, Article 1484 of the Civil Code enumerates the following activities that constitute trademark use:

• the placement of the mark on goods (including labels and packaging of goods) that are manufactured, offered for sale, sold, demonstrated at exhibitions or fairs or otherwise introduced into circulation in the Russian territory, or stored or transported for this purpose, or imported into the Russian territory;
• use of the mark while performing work or providing services;
• use of the mark in the documentation accompanying the goods introduced onto the market;
• use of the mark in offers for sale of goods and services, as well as in advertisements and on signboards; and
• use of the mark on the Internet, in domain names, or in other means of address.

The success of the outcome, like in every litigation case, is totally dependent on the evidence found that will be provided to the court. The following documents may be used as evidence under Article 1484 of the Civil Code:

• supply contracts, shipping documents, documents on the volume of productions, photographs of samples of goods with an indication of dates;
• the license agreement between prior rightsholder and manufacturer registered with Rospatent, information on sales of goods, samples of goods;
• contract on manufacturing goods, payment transactions confirmations;
• package labels, labeling on documentation, outdoor signs;
• certificates of conformity, supply contracts, shipping documents, online marketing campaign in conjunction with administration of the domain name;
• documents, which evidence on factual company’s activity, contracts, which evidence ordering polygraphic materials and maquettes;
• licenses for manufacturing, storing, and supply of alcoholic beverages;
• manufacturing capabilities for manufacturing goods in conjunction with evidence of further introduction into a civil turnover.

When accumulating documents, it is critical to ensure that none of the documents fall into common pitfalls, such as:

• documents do not have any references or indications of dates;
• documents are beyond the scope of the examined three-year timeframe
• documents relating to goods or services which are named in the registration;
• failure to provide evidence on introduction goods into a civil turnover.

Typically, trademark owners do not use their trademarks personally, instead, they authorize third parties with whom they have a commercial connection to do so. In this regard, Russian law makes no provision for legal obligations requiring the trademark owner to use the mark exclusively. According to the legislation, the mark can be used by a third party who has been allowed by the owner under a license or sub-licensing agreement, or any other third party who uses the mark under the owner’s authority. The latter is frequently used to characterize the rightsholder’s commercial or other contractual connection with a third party.

Despite the fact that trademark usage is obligatory, Russian law creates a variety of exceptions. Force majeure or unforeseen political choices are examples of situations outside the rights holder’s control that might be invoked as a defense in cancellation proceedings. A ban imposed by state authorities on goods imported into the Russian Federation’s territory, the purchase of expensive equipment that may result in an unpredicted delay due to significant financial expense, and the inclusion of the exclusive right to the trademark in the bankruptcy estate are just a few examples.

Evidence of use in China

In China’s trademark procedure, non-use cancellation is extremely essential. Article 49(2) of the Chinese Trademark Law provides the legal basis for submitting a non-use cancellation petition: Where a registered trademark becomes a generic name of the commodities for which it is approved or a registered trademark has not been used for three years consecutively without a proper reason, any organization or individual may apply to the trademark bureau for revocation of the said registered trademark.

In terms of process, any party may simply file a non-use cancellation request with the China Trademark Office (CTO) indicating that the mark has not been used for more than three years from the registration date. Frequently, the CTO approves the filing without seeking any further evidence. The CTO will send the registrant a notice of providing evidence two months after the complaint is accepted, requesting the registrant to present proof of trademark usage within two months. The CTO may issue a decision to revoke the trademark registration if the trademark registrant fails to present proof or if the evidence is inadequate to substantiate the trademark’s usage. The CTO’s judgment is susceptible to judicial review at two levels, by the Beijing IP Court and the Beijing Higher Court, respectively.

In practice, proof of trademark usage typically consists of the following materials, but is not limited to:

• Products or product photos bearing the subject mark.
• Product packages, or photographs of product packages, bearing the subject mark.
• Product orders, sales contracts, relevant invoices, shipping documents, etc. For enhanced credibility, it is preferable that these documents are in a chain to show the consistency of each transaction.
• Advertising materials featuring the subject mark such as advertisements, product catalogs, magazines, newspapers, exhibition attendance evidence, etc.
• Evidence certifying the subject mark’s fame such as awards.
• If the mark has been authorized to be used by licensees, evidence of use of the subject mark by the licensees. In such a case, relevant license agreements should be provided as well.

It is ideal that the papers create a chain of evidence to increase their usefulness. In order to prevent being canceled due to non-usage, the evidence of use should ideally be rather considerable.

Here are some instances of trademarks being used in conjunction with products:

• the trademark is affixed to the goods, packaging of goods, containers, labels, etc., or applied to the appending labels, product description manual, introduction manual, price list, etc., by means of direct affixing, imprinting, stamping, or weaving, etc.;
• the trademark is used in transaction documents relating to the sale of goods, including sales contracts, invoices, bills, receipts, quality inspection certificates, customs clearance bills, etc.;
• the trademark is used in advertisements and promotions through media such as broadcasting, TV, printed publications, billboards, mail advertisements, etc.;
• the trademark is used in exhibitions or trade fairs.

The following are some examples of trademark usage on designated services:

• the trademark is directly used in the service premises, e.g. the introduction pamphlet, the receptions, the decoration of the premises, the clothing of the staff, posters, menus, price lists, lotteries, office stationery, letterheads, etc.;
• the trademark is used on documents related to the services, such as invoices, bank documents, service contracts, after-sales maintenance certificates, etc.;
• the trademark is used in advertisements and promotions through media such as broadcasting, TV, printed publications, billboards, mail advertisements, etc.;
• the trademark is used in exhibitions or trade fairs.

You can find the list of China IP Firm here.

You can find the list of Russia IP Firm here.