The “use” requirement in trademark revocation cases in China

The “use” requirement in trademark revocation cases in China based on non-use for three consecutive years

A trademark right is an intellectual property right that increases its value through actual use and the commercial benefits derived therefrom, meaning that its actual use by the trademark holder occurs out of a commercial need which therefore enhances and reflects the trademark’s value. For this purpose, Article 49 of the China Trademark Law and Article 66 of the Regulations for the Implementation of the Trademark Law provide that when a registered trademark has not been used for three consecutive years, the Trademark Office can revoke the trademark or order the trademark owner to correct its non-use. Moreover, anyone can apply to the Trademark Office for revocation of a trademark, which makes the actual use of a registered trademark an essential statutory requirement for maintenance of the trademark right. In other words, the trademark owner must commercially use the registered trademark so as to prevent its revocation on the basis of non-use after three consecutive years, and in order to maintain the exclusive right to use the registered trademark.

In July 2007, BMW intended to apply for “MINI” (NO.6169130) as a registered trademark in China and to certify its use on Class 28 car model products. But the “mini” (NO.851498) trademark was an already existing trademark. Guangzhou ZhujiangMeileduo Drinks Company has already registered the trademark in July 1994, and certified its use on Class 28 products including toys and other games. In October 2009, the Trademark Office rejected the registration of the “MINI” trademark, seeing that both the “mini” and “MINI” trademarks were considered similar when used on the same product.

Disputed trademark: MINI (NO.6169130)

BMW challenged the “mini” trademark and sought its revocation from the Trademark Office on the grounds that the trademark has not been used in China for three consecutive years. Although the Trademark Office refused to revoke the “mini” trademark at first, BMW then brought the case to the Beijing First Intermediate People’s Court, which upheld the Trademark Office’s decision. Seeing that BMW appealed the case to the Beijing Higher People’s Court, the Trademark Office then revoked the cited “mini” trademark in 2015 in accordance to Article 49 of the China Trademark Law.

Nonetheless, the Beijing Higher People’s Court made its second-instance decision in the trademark dispute case between “mini” and “MINI”, and revoked the initial decision made by the Trademark Office and the decision made by the Beijing First Intermediate People’s Court. The court held that, as the “mini” trademark had been revoked, the trademark owner had lost its exclusive rights over its use. In such a case, if the cited trademark has been revoked, and trademark in question has not been registered again, the decision should be made in accordance to the principle of changed circumstances.

Ultimately, the revocation was consistent with the spirit of the China Trademark Law, as the value of a trademark is accumulated through its use. Without use, the value of a trademark cannot be created or preserved. China is not the only country that has this consecutive use provision in its trademark laws, in fact, the EU is stricter with its consecutive use requirement of 5 years rather than China’s 3-year requirement.

Jiaqing Huang

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