In this article, the author discusses the evidence collection and multi-procedure response after the trademark of a foreign company was withdrawn for three times through a series of cases handled by a foreign company, aiming to provide some reference for the response of enterprises after the trademark was withdrawn for three times.
Author | He Wei, Hao Shujie, Beijing Sanyou Intellectual Property Agency Co., Ltd
Edit | Bruce
I. Introduction
Article 49 of the Trademark Law stipulates that the revocation of a trademark for three consecutive years (hereinafter referred to as the "third revocation") is like a sharp sword hanging over a trademark that has been approved for registration for three years. After the trademark is withdrawn, the enterprise needs to submit evidence of the use of the trademark before the cancellation application or explain the justifiable reasons for not using it within the prescribed time limit. Otherwise, the registered trademark of the enterprise will face the risk of being revoked. According to the legislative purpose, "the intention of the three-year non-use cancellation provision in the Trademark Law is to remove dead trademarks from the trademark register in the market, so as to give full play to the role of trademarks in identifying the source of goods or services, and to clean up idle and unused 'dead trademarks', so as to prevent waste of trademark resources and maintain fair competition." [1] However, "in the course of examination practice, it has been found that individual applicants have maliciously abused the three-party withdrawal system in order to achieve unfair competition, demand for fees or other improper purposes, knowing or should have known that the trademarks of others have been used." [2] Based on the role of revocation in resolving prior obstacles in trademark dispute cases and the negative impact on the operation of enterprises, filing an application for cancellation of the trademark of another person has become a means of market competition. How to deal with the withdrawal of the company's trademark is a thorny issue.
In this article, the author discusses the evidence collection and multi-procedure response after the trademark of a foreign company was withdrawn for three times through a series of cases handled by a foreign company, aiming to provide some reference for the response of enterprises after the trademark was withdrawn for three times.
II. Basic circumstances of the case
A foreign company is a world-renowned enterprise in the field of nutritional and health products, and a number of main trademarks (which are also the brand names of its main products) have been designated in China through international registration, and were allowed to be extended in China in 2011. The company officially entered the Chinese market in 2012 and has since sold its products and promoted its brand in China.
A company in Shanghai was established in 2014 and immediately applied for registration of a number of trademarks that copied and imitated a foreign company. In 2015, in order to remove the prior obstacle to its bad faith trademark application, a company in Shanghai filed an application for cancellation of the international standard of a foreign company on the grounds that it had not been used for three years.
After the trademark of a foreign company was withdrawn for the third time, the right holder actively collected evidence of use and made a defense. In the course of the examination and trial, when the courts of first and second instance disagreed on whether the evidence of use provided by them could prove the use of the non-standard designated goods, a foreign company of the right holder actively collected relevant materials to prove the composition of its products, etc., and corrected the translation of the goods designated by the international registered trademark, so that its trademark could be maintained. On the other hand, a foreign company took the initiative to apply multiple procedures to file an opposition, invalidation and other applications against a Shanghai company's trademark, restricting the withdrawal measures of a Shanghai company, resulting in a Shanghai company not obtaining the exclusive right to use the trademark.
At the top of the timeline below is the result of the examination of a foreign company's trademark that was withdrawn from the third period and the result of the multi-procedure remedy to maintain the registration (the registration was maintained in the revocation procedure - the revocation review procedure was revoked - the registration was maintained in the administrative litigation retrial procedure). At the bottom of the timeline is an attack taken by a foreign company against the trademark of a company in Shanghai.
3. Situation analysis and multi-program application after the removal of the three
First of all, it is necessary to analyze the reasons for the cancellation of the third application (i.e., whether to block the registration of the other party's trademark), and at the same time, it is necessary to formulate a corresponding plan according to the use of the right holder's trademark, and strive to safeguard the relevant interests of the right holder.
1. Actively collect and use evidence, conduct defense, and strive to maintain registration to the end.
According to the 2021 Guidelines for Trademark Examination and Adjudication, the evidentiary materials used to prove that the trademark at issue has not been non-used for three consecutive years shall meet the following requirements:
(1) the logo of the trademark at issue can be displayed in use;
(2) it can show that the trademark at issue is used in the goods or services designated for use;
(3) The user of the trademark at issue can be shown to include the trademark registrant himself, others authorized by the trademark registrant, and other persons who do not use the trademark against the will of the trademark owner. If the use is permitted to others, it shall be able to prove the existence of the licensing relationship;
(4) the date of use of the trademark at issue can be shown, and it should be within three years from the date of the cancellation application;
(5) It can prove the use of the trademark at issue within the territorial scope of the validity of the Trademark Law.
(1) It has been used, and evidence has been collected to prove that a complete chain of evidence has been formed
In this case, after the trademark of a foreign company represented by the author was withdrawn, the right holder actively collected evidence of the use of the trademark in question within the specified period of time and made a defense. Such evidence includes Taobao sales records, product pictures, logistics bills for exports to China, photos of the licensee participating in the expo held at the China International Exhibition Center in Beijing in 2015, the catalogue, the introduction of the rights holder's brand products on the official WeChat account of the exhibition organizer, and the advertisements of the rights holder's licensed distributors about the brand products involved in the case, etc., which can form a complete chain of evidence.
However, since a foreign company's trademark was withdrawn as an application for the extension of the territory of international registration to China, English goods need to be translated after entering China, and the previous translation of goods was "flour containing phosphorus, milk and vitamins". The actual product used by a foreign company whose trademark was withdrawn was "baby milk powder". The courts of first and second instance both held that "infant milk powder" and "phosphorus-containing and milk-vitamin flour" were not the same kind of goods, so the evidence in the case could not prove that the disputed trademark had used the "phosphorus, milk and vitamin flour" and other goods approved for use during the designated period. Before initiating the retrial, a foreign company actively collected reinforcing evidence, and corrected the translation of the goods designated by the disputed trademark to "powders containing phosphorus, milk and vitamins", and emphasized that the ingredients of the infant milk powder actually used contained nutrients such as "phosphorus, milk, vitamins (vitamins)", which were the same as the approved "phosphorus and milk vitamin containing powder" or the previously translated product "phosphorus and milk vitamin flour" All of them are to provide babies with necessary nutrition, and the sales channels and consumer groups are basically the same, so they should be identified as the same commodity or infant milk powder is a subordinate concept commodity of "powders containing phosphorus, milk, and vitamins", and strive to the end. Finally, in the administrative judgment of the Supreme People's Court, the court held that infant milk powder should be a kind of "powder containing phosphorus, milk and vitamins", and held that the evidence provided by the right holder could corroborate each other and could prove the fact that the trademark was used on the relevant goods during the specified period.
Through this case, enterprises need to be reminded that when the trademark of the right holder is approved and registered by the international registration designated in China, when the content of the specified goods/services is different from the actual product scope, it must apply for correction of the Chinese translation in time, or supplement the application for registration, otherwise the determination of the use of the trademark on the designated goods will be affected.
In the examination of the third defense case, the determination of the relationship between the goods actually used by the trademark and the goods approved for registration of the trademark directly affects whether the trademark can be maintained on the relevant goods. The goods actually used do not fall under the standard commodity names in the Table of Distinction of Similar Goods and Services, and it will be difficult to determine whether it constitutes the use of designated goods.
According to the Beijing High People's Court's Guidelines for the Trial of Administrative Cases Involving the Authorization of Trademarks, when the goods actually used do not belong to the standard commodity names in the Table of Distinction of Similar Goods and Services, but they are different from the goods only in the name of the goods, and are essentially the same goods, or the goods actually used belong to the subordinate concept of the approved goods, it can be determined that the use of the approved goods constitutes the use of the approved goods. In addition, if the disputed trademark is used on the approved goods, the registration on other approved goods similar to the goods may be maintained.
In the (2022) Jing Xing Zhong No. 7038 Administrative Judgment of the Second Instance of Revocation of Review by Wang Qiuluan v. the State Intellectual Property Office of the People's Republic of China, the High People's Court also held that "taking into account the above factors, combined with other evidence such as WeChat screenshots and exhibition photos submitted by Kubota Co., Ltd., it can be determined that the evidence in the case has formed a complete chain of evidence, which is sufficient to prove that the disputed trademark was used in public, true and legal commercial use on the belt and filter cartridge goods during the specified period." Belts and filter elements do not belong to the standard commodity names in the "Classification Table of Similar Goods and Services", and according to their function, physical attributes, consumption channels, etc., they can be identified as the subordinate concepts of "couplings, transmission belts and other machine parts for machine transmission". Therefore, the aforesaid commercial use of the Disputed Trademark on belts and filter elements can maintain the registration of the Disputed Trademark on the goods of "couplings, transmission belts and other machine parts for machine transmission". [3]
(2) Have a genuine intent to use, collect evidence, and prove that the necessary preparations have been made
If the right holder has a genuine intention to use the trademark within the specified period, such as if the right holder has signed a publicity contract with an advertising company, participated in an exhibition, or domestic consumers can learn about the publicity and use of the trademark abroad through the Internet, etc., the right holder has made the necessary preparations for the actual use of the trademark in China, and the registration of the trademark may still be maintained.
In the (2020) Jing Xing Zhong No. 1531 Administrative Judgment of the Second Instance of the Revocation of the Review by the State Intellectual Property Office of the People's Republic of China v. Automobili Lamborghini Co., Ltd., the Beijing High People's Court held that: " Although Lamborghini, as the owner of the Disputed Trademark, did not put the goods using the Disputed Trademark on the market during the designated period, it did have evidence to prove that it had the true intention to use the Disputed Trademark and made the necessary preparations, especially since the vehicles designated for use by the Disputed Trademark are now on sale in the Chinese market, and evidence of continuous use after the designated period can also be used to prove the true intention of the right holder. In summary, it was not improper for the trial court to find that the true state of the disputed trademark during the specified period did not meet the circumstances of 'non-use for three consecutive years' and should be revoked, and this court upheld it." [4]
In (2016) Jing Xing Zhong No. 4846 (Trademark Review and Adjudication Board of the State Administration for Industry and Commerce, Tianjin Dawei Group Co., Ltd. v. Crown Melbourne Co., Ltd.), the Beijing High People's Court held that "the Private Geography and Fortune submitted by Crown Company The fact that the Disputed Trademark was displayed in the above-mentioned periodicals within the specified period of time can prove that Crown Company publicized and used the Disputed Trademark in the form of periodical advertisements during the specified period, and effectively used it within the meaning of the Trademark Law. In addition, during the specified period, a number of newspapers and periodicals in China reported on the news of the opening of hotels by Crown in the Macao Special Administrative Region, and the evidence on record showed that domestic consumers in China could book the hotel services provided by Crown in the Macao Special Administrative Region of China and outside China through domestic travel websites, which shows that the Disputed Trademark has played a certain role in identifying the Disputed Trademark in China. [5] Therefore, although there was relatively little evidence submitted by Crown Company on the use of the Disputed Trademark within the specified period, the courts of first and second instance found that Crown's use of the Disputed Trademark was a genuine and bona fide use of the Disputed Trademark.
From the above, it can be seen that when the trademark that has been withdrawn from the third has important commercial value, even if it is rarely used in China within the prescribed period, it can still try to assert that it has a real intention to use, and provide evidence that corresponding preparations have been made, and strive to maintain the registration.
2. Actively apply multiple procedures to attack the trademarks of the three applicants, and restrict the measures of the three applicants.
Attacking the trademarks of the three applicants for revocation, including the use of procedures such as submitting public comments, filing oppositions, invalidation, and cancellation applications, is used to crack down on the trademarks that are under examination or approved for registration by the three applicants, so as to put the trademarks of the three applicants in a disadvantageous situation, and restrict the measures taken by the applicants for the revocation of the trademarks against the trademarks of the owners of the three revocations.
First of all, at the substantive examination stage of a trademark application, since the CNIPA can invoke the Trademark Law Article 4 to reject the application for registration of a trademark, the owner of the three withdrawn trademarks may submit public comments on the trademarks of the three applicants for the cancellation of the trademarks that are still under substantive examination, and submit evidence of the use of their own trademarks by the owners of the three withdrawn trademarks to prove that the trademarks in the applications of the three applicants for cancellation are malicious trademark registration applications not for the purpose of use, and try to get the examiner to directly reject the trademarks of the three applicants that are still under application, or issue an examination opinion on the trademark.
In the Notice of Rejection of Trademark No. 73343573, the examiner cited three prior trademarks, "on the grounds that the application for registration of the trademark is suspected of constituting an application for registration of a trademark in bad faith not for the purpose of use, although the applicant for trademark registration submitted the relevant explanations within the time limit prescribed by law, but failed to provide evidence to prove that the trademark has actually been used or has a real intention to use, it is determined that the application for trademark registration is an application for registration of a trademark in bad faith not for the purpose of use, and the application for trademark registration is rejected as a malicious trademark registration application not for the purpose of use." [6]
Secondly, during the review stage of trademark refusal, the CNIPA will also focus on whether the re-examined trademark violates Article 4 of the Trademark Law. If the trademark of the third applicant has been rejected because of the trademark of the right holder, the right holder may try to put forward public comments on the trademark of the third applicant for the cancellation of the trademark during the review of the rejection, stating that the reexamination trademark of the third applicant is a malicious trademark registration application not for the purpose of use, and try to have the trademark of the third applicant for cancellation be rejected in the rejection review, or considering the subjective bad faith of the third applicant for the reexamination of the trademark application, the examiner will not suspend the review of the rejection of the trademark due to the cancellation of the previous trademark and finally reject the trademark of the third applicant。
In Shang Ping Zi [2023] No. 0000375264 Decision on the Review of the Rejection of the No. 61548315 "VIDO" Trademark", in the case that "once the cited trademark becomes invalid after the invalidation procedure, the application for registration of the cited trademark No. 2 has been rejected, so it no longer constitutes an obstacle to the prior right to the approval of the application for trademark registration", the Intellectual Property Office (IPO) was arrested for "the act of applying for trademark registration is suspected of constituting an application for registration of a trademark in bad faith not for the purpose of use"[7] The rejection of the registration of the trademark shows that the crackdown on bad faith trademark registration in the trademark rejection review procedure has been strengthened.
Thirdly, the right holder may also file an opposition application against the trademark under the name of the three applicants. In this case, a foreign company filed an opposition application against the trademark of a Shanghai company, the applicant for the cancellation of the third trademark, after its trademark was withdrawn. As listed in the above timeline, the trademark of the applicant for cancellation was refused registration in opposition proceedings - it was granted registration in the non-registration review procedure - it was declared invalid in the invalidation procedure.
Finally, in addition to the situation where the right holder's trademark blocks the withdrawal of the three applicants' trademarks, and therefore the third application is withdrawn, in practice, it often happens that the right holder's trademark does not prevent the cancellation of the registration of the three applicants' trademarks, and the three applicants file an application for cancellation of the three trademarks against the right holder's trademark because they believe that the coexistence of the registered trademark of the right holder and its registered trademark may cause confusion and misunderstanding among the relevant public. In this case, the right holder may file an application for cancellation of the registered trademark of the third applicant for cancellation, or it may file an application for invalidation of the trademark of the third applicant based on the trademark that is still in the defense of the third application (if the filing date is earlier), so as to actively attack.
Through the cooperation of the above procedures, the applicant for the withdrawal of the three trademarks is forced to encounter the rejection of the trademark in its application, and the trademark that has been approved and published is faced with the dilemma of not being registered or delayed registration, and the registered trademark encounters the risk of being revoked or invalidated, and the applicant for the withdrawal of the three may turn to negotiate with the right holder to resolve the dispute, such as withdrawing the application for cancellation of the trademark of the right holder or negotiating the transfer, so as to meet the interests of the right holder to a certain extent.
Concluding remarks
To sum up, after the withdrawal of its trademark, enterprises need to actively collect evidence and respond to multiple procedures, and do everything possible to maintain the registration of their trademarks. In the daily business activities of an enterprise, it is necessary not only to pay attention to the use of the trademark, but also to retain the evidence of the use of the trademark to prevent the trademark from being revoked after three years of registration. With regard to the collection of evidence of trademark use by enterprises, there are the following suggestions:
1. For the internal management of the enterprise
- Enterprises may regularly retain documents or photos related to the use of the trademark on the packaging, labels, instructions, brochures, price lists, or other attachments of the goods. Enterprises that provide services need to keep regular service brochures, store decorations, staff clothing, personal business cards, price lists, office documents, etc.
- Enterprises can also consider using timestamps to regularly retain the introduction or advertising pages of goods or services published on their websites or official accounts.
- When participating in exhibitions, expos and other commercial activities, enterprises should not only do a good job in their own publicity, but also retain evidence of the use of relevant trademarks, such as taking photos of printed materials, badges, signs, background signs, and photos of employees participating in the exhibition, and retain the contracts signed during the exhibition, the invitation letters issued, and the reimbursement vouchers received.
- For the relevant activities held within the enterprise, if it involves product promotion or corporate brand honor, etc., the relevant photos and self-media articles released with the publicity should also be retained accordingly.
- Enterprises need to emphasize that employees standardize the use of approved trademarks, correctly add the logo of registered trademarks, avoid using approved trademarks as product models, product names and other ways that may be considered as common words, and emphasize the role of trademarks as a brand to distinguish the source of goods or services. In the process of communication between employees and the outside world, when it comes to the transaction of products or services, the relevant emails in the company's mailbox should be retained to prove that the company has a real intention to use its trademark, or form a complete chain of evidence with other external transaction documents.
In the process of retaining the above documents, it is necessary to pay attention to the fact that the documents should contain the logo of the enterprise's trademark, have the corresponding date, and show the corresponding geographical scope, so as to better prove that the enterprise has used the trademark for specific goods or services in China within a certain period of time.
2. For the external management of the enterprise
- In the production process, the transaction documents generated by the enterprise and the raw material suppliers, product manufacturers, product packagers, product inspection and testing institutions and other cooperative enterprises for the production of the brand products, such as entrusted processing contracts.
- In the sales process, the sales documents signed between the enterprise and the sales agents, distributors, online sales platforms and other cooperative enterprises to enter the actual circulation of its brand products, as well as the vouchers for the actual sale of the products by these sellers to the relevant public in China, such as agency agreements, power of attorneys, sales contracts, invoices, logistics documents, and transaction documents or transaction records of e-commerce operations.
- In advertising campaigns, advertising contracts, advertising expenditure vouchers, and relevant performance documents generated by commercial activities organized by enterprises and advertising companies, online media platforms, periodicals and magazines and other cooperative enterprises to expand product awareness and influence.
In the process of sorting out and retaining the evidence generated between enterprises and external partners, it is also necessary to pay attention to retaining legal documents and certification documents issued by state organs, testing or appraisal institutions and industry organizations, such as customs declarations for import and export goods, quality inspection certificates, etc.
Finally, if an enterprise applies for a registered trademark to defend against preemptive registration by others, or does not plan to use the trademark in the short term, in order to prevent its trademark from being revoked, it can also consider co-branding with multiple enterprises in different industries or exploring new business models for selling goods to collect evidence of the use of the trademark and try to maintain the trademark registration.
In short, the use of a trademark can not only make the trademark rights more stable, but also effectively resist the malicious registration of others. Trademarks can only realize their value through use, and enterprises should pay attention to the use of trademarks, so that trademarks can better help the development of enterprises.
Annotations (swipe up and down to view)
[1] Shang Ping Zi [2022] No. 0000055544 Revocation of the Decision on Revocation
[2] Wang Jingyang. Withdrawal of the three" case review in the case review of the active citation of case analysis
[3] (2022) Jing Xing Zhong No. 7038 Wang Qiuluan v. the State Intellectual Property Office of the People's Republic of China to revoke the second-instance administrative judgment of review
[4] (2020) Jing Xing Zhong No. 1531 "Administrative Judgment of the Second Instance of the Revocation of the Review by the State Intellectual Property Office of the People's Republic of China v. Automobili Lamborghini Co., Ltd."
[5] (2016) Jing Xing Zhong No. 4846 (Trademark Review and Adjudication Board of the State Administration for Industry and Commerce, Tianjin Dawei Group Co., Ltd. v. Crown Melbourne Co., Ltd. Revocation of the Administrative Judgment of Second Instance of Revocation of the Review
[6] Notice of Refusal of Trademark No. 73343573
[7] Shang Ping Zi [2023] No. 0000375264 "Decision on the Rejection Review of the No. 61548315 "VIDO" Trademark
Author of this article
He Wei
Beijing Sanyou Intellectual Property Agency Co., Ltd
Trademark Attorney is a senior trademark attorney
Hao Shujie
Beijing Sanyou Intellectual Property Agency Co., Ltd
Trademark Attorney at Law
(This article only represents the author's point of view and does not represent the position of intellectual property)