Perspective | A Brief Analysis of "Actual Use" in the Trademark Law Regarding "Within the Previous Three Years"
Published:
2024-12-09
Article 64 of the Trademark Law stipulates that if the holder of a registered trademark requests compensation and the accused infringer defends by claiming that the holder has not used the registered trademark, the people's court may require the holder to provide evidence of actual use of the registered trademark within the previous three years. If the holder of the registered trademark cannot prove that they have actually used the registered trademark within the previous three years, nor can they prove that they have suffered other losses due to the infringement, the accused infringer shall not bear the liability for compensation.
Article 64 of the Trademark Law states: If the holder of a registered trademark requests compensation and the accused infringer defends by claiming that the registered trademark holder has not used the registered trademark, the people's court may require the registered trademark holder to provide evidence of actual use of the registered trademark within the previous three years. If the registered trademark holder cannot prove that they have actually used the registered trademark in the previous three years, nor can they prove other losses caused by the infringement, the accused infringer shall not bear the liability for compensation.
Accordingly, whether there has been actual use in the previous three years becomes the key point for compensation. Below is an analysis of how to understand and apply "the previous three years" in conjunction with case studies.
Case 1
The plaintiff, Yanjing Zhihui Company, sued the defendant, Beijing Yanjing Company, for unauthorized use of its "Yanjing Guolv" trademark on the WeChat platform and website store on October 25, 2018 (the actual filing date was January 7, 2019). During the first and second instance hearings, Beijing Yanjing Company raised the defense that the disputed trademark had not been actually used, while the plaintiff submitted some website videos, WeChat public account articles, and other content to prove its actual use.
Judgment Opinion:During the retrial, Beijing Yanjing Company claimed that the registered trademark in question had not been used in the legal sense for three years prior to the date of the first instance lawsuit (i.e., from October 26, 2015, to October 25, 2018), and therefore should not bear liability for compensation according to Article 64 of the Trademark Law. In this regard, the court believes that since the filing date of the first instance case is January 7, 2019, this date serves as the starting point for the plaintiff's request. Therefore, the period for Beijing Yanjing Company's defense of non-use of the registered trademark should be from January 8, 2016, to January 7, 2019.
-- See Beijing High People's Court (2022) Jing Min Zai No. 72 Judgment.
Summary:The Beijing High Court, based on the defendant's defense, calculates "the previous three years" from the filing date, which is straightforward and beneficial for practical operations.
Case 2
The plaintiff, Jiangzhong Pharmaceutical Co., Ltd., sued the defendant, Jieyang Linyuantang Pharmaceutical Technology Co., Ltd., for unauthorized use of its "Jiangzhong" registered trademark in the category of nutritional foods. In the second instance, the defendant raised a defense that the disputed trademark had not been actually used in the previous three years.
Judgment Opinion: The correct application of this provision requires clarification of the interval of "the previous three years" and the connotation of "actually used the registered trademark." The court comments on these two issues as follows: Regarding whether "the previous three years" refers to the three years prior to the occurrence of the infringement or the three years prior to the lawsuit. First, the basis for the right to claim compensation is the existence of infringement losses, and whether the infringement causes actual losses generally depends on the usage of the trademark by the parties at the time of the infringement, which is usually unrelated to the subsequent usage by the trademark owner. Second, the law is a normative framework that must clearly define the rights, obligations, and corresponding legal consequences for the parties, allowing them to adequately predict the consequences of their actions. If the previous three years are determined to be the three years prior to the occurrence of the infringement, the actor can effectively predict the consequences of their actions based on the situation before the act. However, if the previous three years are determined to be before the lawsuit, the consequences of the actor's actions may change due to facts arising after the infringement, which clearly does not meet the legal requirement for certainty.
-- See Guangdong High People's Court (2018) Yue Min Zhong No. 1740 Judgment.
Summary:In this case, the calculation of "the previous three years" is based on the occurrence of the infringement. Using this as a reference point is beneficial for promoting timely use of trademarks by trademark holders.
Case 3
The plaintiff, Beijing Bicycle XX Company, sued the defendant, Shanghai Qibei XX Company, for unauthorized use of its "Qibei" trademark on websites, mobile apps, WeChat public accounts, etc., and later appealed to the Shanghai Intellectual Property Court. The disputed trademark was approved for registration on June 28, 2018. At the time of the infringement, the disputed trademark had not been registered for three years, and the defendant raised a defense that the disputed trademark had not been actually used.
Judgment Opinion:The court believes that the "previous three years" stipulated by the Trademark Law is mainly to clarify that the trademark owner should have actually used the trademark within three years prior to the occurrence of the infringement or the lawsuit. This does not mean that if the trademark was registered for less than three years at the time of the infringement or the lawsuit, it is not subject to the above provisions. Even if the trademark has not been registered for three years, if the rights holder has not actually used the registered trademark and cannot prove other losses caused by the infringement, the accused infringer should also not bear liability for compensation.
-- See Shanghai Intellectual Property Court (2022) Hu 73 Min Zhong No. 77 Judgment.
Summary:"The previous three years" should also include situations where the trademark has not been registered for three years. Even if it has not been three years, as long as it has not been actually used since the date of registration, it falls under the category of not having actually used the trademark within three years, and the accused infringer can also raise this defense.
Lawyer's Opinion:The purpose of this legislation is to promote the actual use of trademarks. Regardless of whether the trademark has been registered for three years at the time of the lawsuit, this provision should apply, and compensation for infringement of trademark rights is also based on the principle of loss compensation. Non-use cannot add goodwill and value to the trademark, nor can it allow the infringer to effectively predict the consequences of their infringing actions. If the rights holder only begins to use the trademark after the infringement occurs, it may lead to non-genuine use of the trademark for the purpose of protecting rights, which is not conducive to the construction of a trustworthy society. However, due to the continuous nature of certain infringing actions, there is uncertainty about when the infringement will end. In such cases, the court should flexibly exercise discretion in judgment to protect the legitimate rights and interests of trademark holders.
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