This article is a fictionalized instructional analysis based on typical scenarios and does not refer to any real case.
The three-year non-use defense is the accused infringer's common weapon for exemption from damages: where the other side's trademark has been registered for three years but no real evidence of use can be produced, the damages claim loses its support. The following analyzes the application and boundaries of the defense through a typical scenario.
Scenario Background
A company registered a word mark in Class 30 several years ago and basically never put it into actual operation. It later found another company using a similar sign on its product packaging and sued for cessation and several million yuan in damages. The defendant found that the registration was over three years old and that no actual goods corresponding to the mark could be found in the market.
Handling Process
- The defendant raised the Article 64(1) defense, asserting that the plaintiff had not actually used the registered trademark within three years and requesting exemption from damages;
- The burden of proof shifted to the plaintiff: the plaintiff submitted several self-made product photos, a license letter of intent that was never performed, and scattered sales documents without the trademark shown;
- The court found that these materials could not prove open, genuine, lawful commercial use of the mark on the approved goods within three years, and the plaintiff also failed to prove other losses from the infringement—the defense succeeded;
- Result: the defendant bore no damages liability. Meanwhile, the defendant filed a non-use cancellation against the registered trademark with the CNIPA; the plaintiff likewise failed to submit valid evidence of use in the cancellation proceeding, and the mark faced cancellation.
Key Takeaways
- The defense only exempts from damages, not liability: the infringement finding is unaffected, and the court may still order cessation—the defendant must not continue using the mark just because the defense exists;
- The standard of proof for use is not low: self-made photos, unperformed contracts, and documents without the trademark are hard to recognize as genuine use; token or last-minute use is generally not accepted;
- Exception for other losses: even without evidence of use, the rights holder can still recover if it proves goodwill or other losses, though this is very hard in practice;
- The defense interlocks with non-use cancellation: exempting damages in one case only defends the present—cancellation dismantles the right permanently, and the two procedures share the same evidentiary standard.
Lessons
For the accused: upon receiving a complaint, first check the registration date and traces of use of the other side's mark; where it has been registered for three years without genuine use, combine the defense with a non-use cancellation—but be clear that the defense only exempts from damages and does not replace cessation, and continued use may invite another suit. Also watch the exceptions: if the other side can prove genuine trademark licensing, export use, or justified non-use due to force majeure, the defense may fail—conduct thorough due diligence on use traces before suing. For brand owners: after registration, genuinely use the mark and archive evidence of use year by year (contracts, invoices, advertising, physical goods), or the trademark may become an empty shell that can neither claim damages nor protect itself in enforcement.
For the specific procedures above, you may book a non-use cancellation defense on MyTMBee, and a filed trademark agent will provide full assistance.