Multiple trademarks owned by the same registrant refers to the situation where the registrant owns several registered trademarks in the same class, one of which is requested to be cancelled due to non-use for three consecutive years. However, the trademark as use evidence provided by the registrant is not clearly and uniquely correspondent with the disputed trademark, but directed to the similar trademark of the registrant, the right holder’s claim to maintain the registration of the disputed trademark is NOT be supported by Trademark Office and the Court.

Pursuant to the 2020 Judicial Interpretations of the Supreme People’s Court, if the used trademark is slightly different from the registered trademark, but its distinctive features have not been changed, it can be deemed as the use of a registered trademark. 

However, the Beijing Higher People’s Court clearly stipulates that if the evidence from the registrant re the actual use of trademark is directed towards other registered trademarks owned by the trademarks owned by the same same registrant, even though there are only slight differences registrant, the claim to maintain the registration of the disputed trademark may not be supported.

The current trademark practice generally follows the principles of Beijing High Court, considering the situation of other similar trademarks owned by the trademark registrant. For example, Tesla owns the two registrations as below in Class 12 covering car products, but Telsa only uses the logo A in its car products. When someone files non-use against its logo B trademark, Telsa logo A evidence of CANNOT maintain the registration of logo B though they are both highly similar. Hence,  logo B will be cancelled.

LOGO A

LOGO B

In another case, the registrant CARLI Company owns two registrations in Class 25, one in the dark background and the other with ribbon stripes. In the non-use cases, the registrant agreements and invoices all show the plain text CARLI or the one with dark backgournd . Therefore, the disputed trademark with ribbon stripes was cancelled because the Court considered was not legally, genuinely and effectively used by the registrant for commercial purposes on the designated clothing goods.

CARLI in Dark Background

CARLI with Ribbon Stripes

Therefore, considering the likely introduction of a system of mandatory proof of use of the mark, we strongly recommend that all trademark owners in China initiate periodic audits of their portfolios and determine strategies to record and keep use evidence of registrations periodically.