Trademark Invalidated? Think Twice Before Submitting “Use Evidence”

Articles
IP CHINA
use evidence

By Skye Zou

When facing a trademark invalidation action, what’s your first reaction? Many businesses instinctively respond by gathering and submitting all available evidence of use: contracts, invoices, product photos, marketing materials.

It feels like the right move, but it actually carries significant strategic risks.

In cases of trademark invalidation, "actively providing evidence" does not necessarily mean "providing favorable evidence".

If evidence of use is submitted without discrimination or screening, it may not only fail to save the trademark, but also lay greater legal risks for the enterprise.

Invalidation is not a fill-in-the-blanks exercise — it’s a targeted offensive. 

Trademark invalidation is not a one-size-fits-all process. The grounds for invalidation matter, and your response should be tailored accordingly.

In China, invalidation actions are typically based on:

  • absolute grounds (e.g. lack of distinctiveness, deceptive, etc), or

  • relative grounds (most commonly, similarity with prior trademarks)

In practice, many cases rely on similarity arguments. That means the core issue is not whether you used the mark, but whether your mark is confusingly similar to another.

If the core of the dispute is the "possibility of confusion", and you submit a large amount of irrelevant "evidence of use", it not only does not help the case, but may also expose commercial information and even be used in reverse by the other party in subsequent litigation

When Evidence Becomes a Liability

 

Improper submission of evidence may directly lead to substantial damages. In particular, use evidence may later be used by the opposing party in infringement litigation. If your commercial activity was previously unclear or difficult to quantify, your own filings may effectively fill that gap.

What might have been a minor exposure could quickly escalate into a much larger damages claim simply because you documented your own business too thoroughly, in the wrong context.

Not All Evidence is Helpful

“More evidence is better.” This is a dangerous misconception. In reality, in trademark review practice, examiners prioritize relevance, authenticity, and probative value over quantity.

Certain types of materials are especially problematic:

  • Evidence that lacks clear linkage to the trademark (for example, invoices without the mark, or product images without supporting documentation)

  • Internally generated marketing materials that cannot be independently verified

  • Suspicious or inconsistent sales data, particularly from online stores with scattered or minimal activity

  • Evidence sets that appear artificially perfect or overly synchronized, raising credibility concerns

Reviewing authorities are experienced in identifying inconsistencies and patterns that do not reflect normal commercial practice.

Strategy first, Evidence second

 

Before preparing any submission, the first step should always be: Understand why your mark is being challenged.

Your response should directly address the invalidation grounds raised by the other party.

For example, if the invalidation is based on similarity, your focus should be on demonstrating:

  • differences in the marks

  • distinctiveness in use

  • absence of consumer confusion

In this context, use evidence is only helpful if it supports these arguments, not simply because it exists.

A Practical Reminder

Trademark disputes are often part of a broader enforcement strategy.

An invalidation action may be a precursor to litigation. What you submit today could shape the evidence landscape tomorrow.

For that reason, responding mechanically or over-disclosing information can carry real legal and commercial risks.

 

Final Thoughts

Evidence is powerful, but only when used correctly.

In trademark invalidation proceedings, success depends less on how much you submit, and more on what you submit, why you submit it, and how it aligns with your legal position.

Before responding, take a step back. A carefully structured defense is almost always more effective than a rushed and overly transparent one.