Myth of Evidence in Chinese Trademark Cases

Gloria Q. Wu, our valued colleague from Kangxin wrote an article about the myth of evidence in Chinese trademark cases. Get to know the facts behind this myth and learn more about Trademarks in China.

Many brand owners experienced the disappointment of receiving a decision of opposition or invalidation or litigation, telling you that your case is not supported because of insufficient evidence for your claimed facts. When realizing how many pages of evidence already have been submitted to the TMO or TRAB or the Court, it gets even harder to understand the decision.

For many, especially foreign brand owners the sufficiency of evidence is a myth. The differences to foreign processes consist amongst others of the specific types of evidence as well as the formality of documents.

Trademark cases in China mostly need evidence in some of the following groups: trademark use, trademark reputation, bad faith, business relationship, similarity of trademarks and similarity of goods/services as well as copyright.

You can read some more details below:

Trademark Use

This evidence is one of the most used in trademark cases such as opposition of invalidation based on the ground of prior use and reputation over the same/similar goods/services, or the ground of well-known trademark.

The following types of evidence either independently or in combination with others can prove the trademark use:

Sales contract, purchase order or invoice showing the goods or services using the trademark is sold to China mainland during the prescribed time period. It should not be electronical and in best case stamped by the Chinese counterpart.
Customs declaration form showing the goods using the trademark are imported to China. Such form should be stamped with the official seal of the Customs;
Audit report showing the sales amount of the goods/services using the trademark in China mainland.
Shop/office lease agreement showing the venue of sales of goods/services using the trademark in China mainland;
Company brochure, product catalogue, and other promotional material. Should only be used in combination with others.

Trademark Reputation

A trademark’s reputation is an important part of opposition in invalidation or litigation, because of prior use and reputation over the same/ similar goods/services or of well-known trademark, trademark infringement litigation and unfair competition litigation.

It is important to remember that trademark reputation is only the result or reaction from relevant public – not be mistaken with trademark use. The following types of evidence either independently or in combination with others can prove the trademark reputation:

Search report from China National Library which is a formal report and considered as a strong evidence.
Notarized webpage. The notarized printing is deemed more reliable because the online version can be changed easily
Awards & honor related to the trademark in China mainland, either issued by the government, association of the industry or the media. However, it might be rare for foreign brand owners to receive awards and honors in China;
Survey report issued by a professional investigation company, showing that the relevant public in China is familiar with the trademark.

Read more about the myth of evidence in the full article.