Where the other side's registered trademark has not been actually used for three years after registration, the accused infringer may raise the three-year non-use defense under Article 64(1) of the Trademark Law: where the holder of the exclusive right to a registered trademark cannot prove actual use of the mark in the preceding three years and cannot prove other losses from the infringement, the accused infringer bears no liability for damages.
Elements and Effect of the Defense
- Premise: the trademark registration is over three years old;
- The burden of proof is on the rights holder: the other side must produce genuine and valid evidence of trademark use within three years, such as sales contracts and invoices bearing the mark, customs declarations, advertising contracts, exhibition records, and photos of physical products;
- Effect: a successful defense only exempts from damages—the infringement finding itself is unaffected, and the court may still order cessation. Damages exemption does not exempt liability.
What Counts as Valid Use
Token use, or last-minute use merely to maintain the registration, is generally not accepted. Accepted use must be open, genuine, lawful commercial use, with a sign substantially identical to the registered trademark, on the approved goods. A license contract without actual use evidence, or self-made photos without transaction records, usually carries insufficient probative force.
Companion Move: Non-Use Cancellation
The three-year non-use defense resolves damages in one case, but the other side's trademark remains and can be used to complain against you again. If you conclude the mark has long been unused, simultaneously apply to the CNIPA to cancel the registered trademark (non-use cancellation), dismantling the right for good. In the cancellation, the other side must likewise submit evidence of use—failure means the mark is cancelled.
Practical Advice
The first step after being sued is to check the other side's registration date and traces of use: where the registration is over three years old and no genuine goods can be found in the market, combining the defense with a non-use cancellation often turns a damages suit into zero damages or even dismantles the other side's right. Brand owners, in turn, should keep continuous evidence of use to keep their own trademarks from being turned against them by the same rule in enforcement.
If you are facing these issues, you may first arrange a non-use cancellation defense on MyTMBee, confirm feasibility, and then decide whether to file—avoiding blind filings that waste official fees.