Keeping evidence is key to protecting business names

The big issue for Chinese companies in protecting their trademarks is filing the proper trademark use evidence during or after trademark registration in most countries and regions.

However, many trademark owners cannot fulfill this obligation due to a lack of knowledge about the importance of keeping materials and how to maintain evidence in the course of daily business activities.

The applicant is obliged to file trademark evidence or statements during the trademark registration process in some common law countries such as the United States and Canada.

The so-called "Competent Authority" will not grant the registration unless the obligation is fulfilled within the stipulated period. Proper use of evidence or statements is necessary for obtaining trademark registration in these two countries.

Almost every country or region has a use requirement that a registered trademark must be actually used in commerce in its jurisdiction within a certain period.

Otherwise, the mark is vulnerable to cancellation if it has not been actually used for several consecutive years.

Although some requirements differ from country to country, proper use of evidence is a key factor to maintain a trademark registration.

It is common that the applicant is required to file trademark use evidence when the Competent Authority issues an "Office Action" or "Official Objection" during the trademark registration on grounds of a lack of distinctiveness or likelihood of confusion with a prior trademark.

Evidence of proper and sufficient trademark use increases the chances of success for overcoming the said action or objection by proving distinctiveness, co-existence with a prior trademark or well-known reputation through long usage of the mark.

This doctrine also applies to opposition procedures and the cancellation-invalidation action.

For Chinese companies exploiting overseas markets, they encounter more difficulties and face more risks to defend their trademark rights than in domestic markets due to complex circumstances.

It becomes a crucial task to gather and sort trademark use evidence in the course of business activities.

It is very important to accumulate a wealth of evidence, and then sort through the materials for documents that will be acceptable in a trademark dispute.

Trademark owners should also pay attention to maintaining evidence that positively promotes the trademark. This evidence can be positive media reports, industry rankings, honors, certificates and other materials.

Chinese companies should pay more attention to trademark management, especially in the course of their overseas business activities.

(To be continued ...)

Chen Fei is a trademark attorney for Unilaten Attorneys at Law, which has handled thousands of trademark cases for hundreds of Chinese companies.

Editor's note: The IPR Special is sponsored by the State Intellectual Property Office and published by China Business Weekly. To contact the Intellectual Property Office, the IPR Special hotlines are 8610-64995419 or 8610-64995826, and the e-mail address is ipr@chinadaily.com.cn.

(China Daily 10/12/2009 page9)