The Improvement Of Revocation Of The Registered Trademark Which Has Not Been Used For Three Consecutive Years

China Trademark Law adopts “registration principle”upon the determination of the exclusive rights to use a trademark, which means whether the trademark is used or not, as long as as it complies with relevant provisions of the Trademark Law, the applicant can acquire the exclusive rights to use the trademark after approval of registration by the trademark competent authorities and get the legal protection. However, such trademark registration system has led to two aspects of abuses. First, a large number of trademarks are registered, while the owners often do not use the trademarks for a long time, causing such trademarks to be idle, the resources are wasted and cannot provide the most value. Second, many trademark owners do not make commercial use of their trademarks, instead they reap high profits by transferring to people in real need or obtain infringement compensation by raising trademark infringement lawsuits against the trademark users. To prevent the massive occurrence of such behavior, China Trademark Law formulates that the registered trademark has not been used for three consecutive years without any justified reason shall be revoked. This system stipulates that, in case a registered trademark has not been used for three consecutive years without any justified reason, any unit or individual can apply to the Trademark Office to revoke it. But in judicial practice, it is often difficult to avoid such behavior, meanwhile it is also difficult to determine the specific criteria of such revocation system. On the other hand, it is hard for the Trademark Office to regulate the management of exclusive rights to use a trademark only relying on this provision. It also needs China Trademark Law to improve the trademark registration acquirement system, during the use process of the registered trademark the obligee shall collect, recognize and report the use conditions to the Trademark Office, the Trademark Office needs to supervise on whether the registered trademark has been used as per provisions of the Trademark Law within the required time and the sustained use conditions of the trademark, in the meanwhile the Trademark Office shall conduct warning, revocation or other administrative penalties against trademarks used inconsistent with the provisions to supervise and urge the obligee to use the trademark properly. In”007 JAMES BAND and pictures” case, the applicant DANJAQ, LLC filed a revocation application to the Trademark Office for reasons that trademarks “007 JAMES BAND and pictures” and “ 007 JAMES BOND”have not been used for three consecutive years, while the Trademark Office and the Courts of First Instance and Second Instance of the Trademark Review and Adjudication Board have delivered different verdicts. The Trademark Office ruled that trademarks “007 JAMES BAND” and “ 007 JAMES BOND” continued to be valid and withdrew the application of DANJAQ, LLC. While the Trademark Review and Adjudication Board revoked the two trademarks, the Court of First Instance upheld the decision of the Board and the Court of Second Instance upheld the decision of the first instance. JAMES BAND Company submitted to retrial and was dismissed.The reason of aforesaid different verdicts is the discrepancy upon the determination criterion of the registered trademark which has not been used for three consecutive years. In the meanwhile, we should also get inspired from this case that the obligee shall collect use evidences about the registered trademarks and relevant departments shall carry out supervision on trademarks use.The first part of this paper takes the “007 JAMES BAND and pictures” trademark revocation case for example to educe the issue to be discussed throughout the paper, which is the legal basis of revocation of the registered trademark which has not been used for three consecutive years without any justified reason and in judicial practice the determination criteria of such registered trademarks and how to conduct such determination.The conclusion is that such criteria should be whether such trademark was on such use as stipulated in Trademark Law during the three disputed years. Simultaneously, it is found through the case that only relying on such determination criteria cannot promptly and effectively protect the legitimate rights of both parties, on the other hand, it is also a waste of time and money, and it reduces the administrative efficiency of the judiciary. Therefore, to fairly and reasonably protect the legitimate rights of the trademark obligee and the applicant, to achieve justice and to improve judicial efficiency, it must be enhanced from other aspects of the revocation of the registered trademark which has not been used for three consecutive years.The second part of this paper first describes the types and pros and cons of current trademark acquirement system, China adopts what kind of acquirement system now and in order to avoid the adverse effects caused by the system so as to set up the revocation system of the registered trademark which has not been used for three consecutive years; then introduces and analyzes the concept of trademark use system and the significance of trademark use;and analyzes the determination criteria of trademark use in order to determine what kind of behavior is so called registered trademark has not been used for three consecutive years without any justified reason and what kind of behavior is not.It can be found that all following behaviors belong to use behaviors as per the Trademark Law, including as long as the trademark was carried out on commercial use with real use intent, the use subject was the register or under the surveillance of the register and the use process was aimed to allow clients to purchase goods or service,even it was flaw use but without changing the salient features of the trademark and illegal use behavior. But on the cultural creativity, subjects like universities are not required to put into commercial use in short time and cannot be revoked for has not been used for three consecutive years. We need to notice that, for a trademark applied to be revoked, at the time or after the application is filed, in the case that the trademark obligee use the trademark, then it cannot be revoked for reasons of has not been used for three consecutive years.In the third part of this paper, the author, through the revelation of“007 JAMES BAND and pictures” trademark revocation case, discovers that in actual judicial practice the positive and effective use of the registered trademark cannot be guaranteed only by defining the determination criteria of trademark use to urge them to prevent from being revoked for has not been used for three consecutive years.At this point it needs to improve relevant systems of the Trademark Law, which means how to improve the registered trademark being revoked for three consecutive years without using system from other aspects, about which the author puts forwards specific methods to optimize it in this part. The author suggests that, first, the Trademark Office shall restrain the subject qualification of trademark registration applicants, regulate the administrative penalties for the registered trademark which has not been used for three consecutive years to reduce the occurrence of “trademark rush registration” and “trademark hoarding”, in the meanwhile, establish resource alternative libraries for revoked trademarks to ensure the realization of trademarks’ value in use. Second, the Trademark Law shall fortify that the trademark obligee needs to provide evidence of initial use of the trademark in prescribed time, regularly inform the Trademark Office the subsequent use with relevant evidences and regulate the punitive measures of the Trademark Office on not used trademarks without any justified reason in order to supervise the use of trademarks. Third, on basis of the revocation of the registered trademark which has not been used for three consecutive years, it shall set up the revocation for accumulative five years to prevent the trademark obligee from using the trademark symbolically.Fourth, improve the burden of proof allocation in such revocation system. Only through improvement of these four aspects at the same time, the occurrence of not used registered trademark can be reduced, the work efficiency of the Trademark Office can increase and the burden of proof allocation between the two parties in trademark cases can be more fair.In the fourth part of this paper, combined with the review decision, the first and second instance verdicts, the provisions about the revocation of the registered trademark which has not been used for three consecutive years stipulated in the Trademark Law and the relevant provisions about trademark exclusive use right in the Trademark Law, the author gives the determination criteria of trademark use in “007JAMES BAND and pictures” trademark revocation case. The author believes that the evidences provided by the trademark obligee including clothes label, copy of printing contract, copy of processing fees invoice, dispatch bill and so on can all be deemed as use evidence of such trademark, meanwhile although the Special Auditor’s Report issued by the accounting firm was not during the thee disputed years, from the purpose of the establishment of such revocation system and the business reputation etc, it shall not apply to such revocation system.In the following part the paper puts forward the specific methods to improve the management of the exclusive rights to use registered trade mark. Firstly,when applying to register “007 JAMES BAND and pictures” trademark, the applicant shall provide the Trademark Office with information on what classifications the trademark will be used, how to use and when to use, and shall sign a use undertaking letter to promise that it will undertake corresponding responsibilities if the trademark has not been used for three consecutive years without any justified reason; secondly,it shall provide the use evidences of “007 JAMES BAND and pictures” to the Trademark Office one year after the registration and regularly provide use evidences to the Trademark Office during use procedure, in which process the trademark obligee shall pay attention to collecting and recognizing the use evidences such as “007JAMES BAND and pictures”sustained use period and the records of trademark propaganda activities etc and shall save the contracts and invoices with distributors and advertisers in order to promptly and effectively present the use evidence of the trademark when others fill lawsuits.When filing the revocation application about the “007 JAMES BAND and pictures” trademark, DANJAQ, LLC shall provide the market survey report about the trademark and non-use evidences of the trademark. By this means, it can play the role of revelation to the maintenance of trademark “007 JAMES BAND and pictures” and other registered trademarks, guarantee the obligee uses the registered trademark as per the Trademark Law, in the meanwhile effectively avoid the adverse consequences for others applyto revoke the trademark for reasons of non-use for three consecutive years, and also is conductive to the management of the registered trademarks carried out by the Trademark Office.