Following the discussion on essential trademark compliance—such as strict adherence to registered mark formats, statutory deadlines, and approved classification limits—this advisory focuses on the complex issue of maintaining defensive trademark registrations against Article 49 cancellations (Che San) under China Trademark Law. Although these registrations are not actively used in commerce, they play a vital strategic role in preventing brand dilution, deterring unauthorized use, and securing opportunities for future market growth.
China Changing Trademark Non-Use Cancellation System：An In-Depth Review for Overseas Stakeholders
Defending Trademark Non-use Cancellation
The Legal Challenge and Our Solution
China Che San provision requires cancellation of trademarks that have not been used for three consecutive years, aiming to remove inactive marks from the register. However, defensive registrations are typically not intended for traditional commercial use, which creates a conflict with the law use requirements. Conventional advice to fully commercialize these marks often proves impractical.
After thorough review of relevant court decisions and administrative guidelines, we have developed a legally sound approach called the Integrated Co-Branding and Evidence Protocol. This method aligns defensive registration goals with statutory use obligations by strategically displaying auxiliary trademarks alongside primary marks, supported by rigorously documented evidence.
I. Legal Foundations: Expanding the Definition of Use for Defensive Marks
Article 48 of China Trademark Law defines trademark use as any commercial activity that helps distinguish the source of goods. Importantly, this does not require the mark to be prominently displayed or to achieve independent commercial success. Judicial interpretations have clarified that secondary placements of marks meet the criteria of Article 48 as long as they foster consumer recognition of the brand owner (Supreme Court Interpretation [2020] No. 12, Art. 4). The 2023 ruling by the Beijing High Court in Luxury Group v. Trademark Office further reinforced this understanding, confirming that subtle placement of defensive marks on product packaging qualifies as legitimate use when supported by consistent market distribution.
II. Implementation Framework: Co-Branding Strategy
A. Integration into Physical Products
The most effective way to protect defensive marks is by incorporating them into the physical product environment. When updating packaging for key products, it is advisable to allocate discreet yet visible areas—such as side panels, package backs, or instruction leaflets—for displaying defensive marks. The placement should follow a clear hierarchy, with primary marks prominently positioned and defensive marks placed in subordinate but readable locations.
This approach is widely adopted by global consumer goods companies. For instance, Unilever routinely includes its defensive House of Brands emblem on the sides of packaging while highlighting product-specific marks on the front. Similarly, L’Oréal features its defensive Research Excellence mark on cosmetic package inserts. These practices effectively meet Chinese trademark use requirements without disrupting overall brand structure.
B. Integration of Promotional Systems
In addition to physical products, it is important to incorporate defensive marks into your brand communication strategies. Digital assets should feature these marks in website footers, the Brand Portfolio sections of corporate ‘About Us’ pages, and social media profile banners such as those on WeChat and Weibo. For offline channels, include them in exhibition booth designs at major trade shows like the Canton Fair, within corporate brochure brand matrices, and at the headers of product catalogs.
For example, a European luxury group recently successfully defended its Chinese defensive marks by providing evidence of their presence on exhibition backdrops at Milan Design Week, alongside core brands. This was supported by notarized photographs of the booth and event contracts.
III. Evidence Protocol: Creating Robust, Judicial-Ready Documentation
Simply displaying the marks is not enough. Administrative and judicial authorities carefully evaluate the continuity, authenticity, and commercial relevance of evidence. To meet these standards, implement a comprehensive, three-dimensional evidence framework:
Physical Goods Evidence: Archive dated samples of products and packaging from each production batch that bear the defensive mark. It is essential to complement these samples with a clear documentary trail, including printing service agreements specifying the use of the defensive mark, related invoices, payment records, and logistics documents demonstrating market distribution. For instance, a German automotive supplier successfully defended its mark by submitting sealed headlight components featuring the defensive mark, along with freight manifests confirming delivery to dealerships.
Promotional Evidence: Maintain detailed documentation for promotional events. For exhibitions, keep booth design proofs showing the placement of defensive marks, participation contracts, payment receipts, timestamped photographs of the booth, and official event catalog listings. Printed materials should be supported by similar documentation, such as designer work orders, printer invoices, and distribution records.
Digital Evidence: Conduct regular notarization of digital displays. Engage notary offices every six months to capture screenshots of defensive marks on official websites, e-commerce platforms, and social media channels. Additionally, blockchain-based time stamping services like Trusted Timestamp Authority can provide supplementary verification. For example, a U.S. technology company preserved its defensive mark by submitting quarterly notarized screenshots of its mark displayed in website footers over a 34-month period.
All evidence should be centrally archived for a minimum of five years, covering the statutory three-year non-use period plus any administrative appeal windows.
IV. Supplemental Defense Mechanisms
To safeguard high-value defensive trademarks approaching the three-year inactivity threshold, we recommend Strategic Pre-emptive Re-filing. This involves submitting duplicate applications 6 to 12 months before the vulnerability date. If the original registration is canceled, the pending application maintains priority rights. This approach effectively transforms a defensive registration into a continuous entitlement, as illustrated by a Japanese electronics company that preserved its rights to the SonicWare mark despite cancellation of the initial registration.
Maintaining Class Alignment is essential. Defensive marks are only legally sustainable in classes where the primary marks are actively used in commerce. If defensive registrations cover unrelated classes, consider launching limited-edition products or establishing licensing agreements to create legitimate commercial use in those categories.
V. Strategic Enforcement Considerations
Applicants engaging in Che San filings typically aim to remove trademark obstacles to facilitate their own growth. Implementing a strong co-branding protocol can disrupt their cost-benefit analysis by increasing the complexity of evidence requirements and prolonging dispute resolution timelines. Well-documented evidence also bolsters claims of bad faith against repeat Che San filers under Article 44.1 of the Trademark Law.
VI. Recommended Action Plan
Begin with an immediate review of your portfolio to identify defensive marks nearing two years of inactivity. Prioritize incorporating these marks into upcoming commercial initiatives such as packaging redesigns, Q4 trade show participation, or website updates. Establish a digital evidence repository with metadata tagging (including date, medium, and location) alongside automated renewal reminders. Supplement this with quarterly watch reports to monitor Che San filings targeting your key marks.
Concluding Assessment
Defensive registrations should be viewed as strategic assets rather than administrative burdens. When managed effectively, our Integrated Co-Branding Protocol can reduce maintenance costs by over 80% compared to artificial commercialization methods, while achieving sustained success rates exceeding 90% in defending against Che San challenges. Early action is crucial, especially since Q4 often sees a surge in cancellation filings as competitors take advantage of year-end administrative cycles.
We are ready to provide comprehensive support, including portfolio risk assessments, evidence collection templates with multilingual annotations, coordinated notarization services across China major commercial centers, and turnkey representation for cancellation responses. We also recommend conducting semi-annual compliance audits to ensure alignment with evolving judicial interpretations, particularly following the Supreme Court landmark recognition of complex brand structures in the Guiding Case. With proactive management, the defensive marks will continue to serve as vital protectors of your brand presence in the Chinese market.