Verdict! "Daoxiangchun" is still protected by the "old brand" trademark of Donglaishun

Recently, the Beijing Higher People's Court made a final judgment rejecting the appeal of natural person Ma Mou and upholding the first-instance judgment of the Beijing Intellectual Property Court, and the two trademarks of "Daoxiangchun Daoxiangchun and Tu" (hereinafter referred to as "Daoxiangchun and Tu") registered by Beijing Donglaishun Group Co., Ltd. (hereinafter referred to as "Donglaishun Company") on "pastries, biscuits, rice cakes, Lantern, Poria Sandwich Cake" and "beef jerky, cooked food, and meat floss" were maintained.

Origin of the case

According to the provisions of the Trademark Law, if the use of a registered trademark is stopped for three consecutive years, the Trademark Office shall order it to make corrections or cancel its registered trademark within a time limit.

On October 13, 2016, ma Mou, a natural person, filed an application for cancellation with the Trademark Office of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Office) on the grounds that the trademark "Daoxiangchun and Tu" registered by Donglaishun Company had ceased to be used for three consecutive years, requesting the cancellation of the above two registered trademarks of Donglaishun Company.

After examination, the Trademark Office held that the evidence of use submitted by Donglaishun Company was valid and could prove that it actually used the trademark "Daoxiangchun and Tu" between October 13, 2013 and October 12, 2016 (hereinafter referred to as the designated period), and therefore decided not to revoke the trademark. Unsatisfied with the decision of the Trademark Office, Ma submitted an application for reexamination to the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as the Trademark Review and Adjudication Board).

Upon review, the Trademark Review and Adjudication Board held that the trademark licensing contract submitted by Donglaishun Company to the Trademark Office could only indicate that Donglaishun Company had signed a license agreement with Beijing Daoxiangchun Food Co., Ltd. for the trademark "Daoxiangchun and Tu", which could not prove that the trademark had actually been used, and that the other evidence submitted by Donglaishun Company could not prove that the "Daoxiangchun and Tu" trademark had actually been used, so it made a decision to revoke the registration of the "Daoxiangchun and Tu" trademark.

Donglaishun Company was not satisfied with the application of the Trademark Review and Adjudication Board and filed an administrative lawsuit with the Beijing Intellectual Property Court.

Litigation

After trial, the Beijing Intellectual Property Court held that the evidence provided by Donglaishun Company was sufficient to form a chain of evidence, which could prove the actual use of the "Daoxiangchun and Tu" trademark, so the first-instance judgment was to revoke the decision of the Trademark Review and Adjudication Board and to make a new review decision by the Trademark Review and Adjudication Board.

Although the Trademark Review and Adjudication Board obeyed the first-instance judgment and did not file an appeal, the plaintiff of the first-instance trial, Ma Mou, appealed to the Beijing Municipal Higher People's Court against the first-instance judgment.

On the basis of supplementing the investigation of the registration, transfer, renewal, use of the trademark license and the historical evolution of the relevant company, the Beijing Municipal Higher People's Court held that although Donglaishun Company, as the trademark registrant, did not provide direct evidence of the actual use of the "Daoxiangchun and Tu" trademark during the designated period in this case, donglaishun company provided it with the "Daoxiangchun" trademark license agreement signed with Beijing Daoxiangchun Food Co., Ltd. on several occasions. Evidence such as the transfer voucher for the payment of the trademark license fee by Beijing Daoxiangchun Food Co., Ltd., the notarial certificate of the use of the trademark "Daoxiangchun and Tu" on the relevant commodities on the market after the specified period, combined with the fact that the "Daoxiangchun and Tu" trademark was repeatedly rated as a famous trademark in Beijing between 1995 and 2014, can prove that the "Daoxiangchun and Tu" trademark was actually used within the specified period, and the conclusion of the first-instance judgment was not improper, therefore, the final judgment rejected Ma's appeal, "Daoxiangchun and Tu" The registration of the trademark was eventually maintained.

Detailed explanation of the case

Ina Kaoru's "Past and Present Lives"

A careful reading of the second-instance judgment of this case shows that since the "Daoxiangchun and Tu" trademark was applied for registration in 1985, the registrant and the business entity to which it belongs have changed many times due to historical reasons, and the original Donglaishun Catering Company and Daoxiangchun Food Company are affiliated to Dong'an (Group) Co., Ltd., and later Dong'an (Group) Co., Ltd. was renamed Beijing Dong'an Group Company, and Beijing Dong'an Group Company Daoxiangchun Food Company was also renamed Beijing Daoxiangchun Food Company. In 2000, according to the approval of the Beijing Municipal People's Government, Beijing Wangfujing Dong'an Group Co., Ltd. was established on the basis of Beijing Dong'an Group Company. In 2003, Wangfujing Dong'an Group Co., Ltd. established "Beijing Donglaishun Group Co., Ltd.", which is the Donglaishun Company in this case. In 2004, Donglaishun Company agreed to the restructuring plan of Beijing Daoxiangchun Food Company in response to its request, and Beijing Daoxiangchun Food Company was restructured and its name was changed to Beijing Daoxiangchun Food Co., Ltd. After that, Donglaishun Company and Beijing Daoxiangchun Food Co., Ltd. signed the "Daoxiangchun" Trademark License Agreement with 2004, 2006 and 2010 respectively, and the restructured Beijing Daoxiangchun Food Co., Ltd. continued to use the reexamination trademark in this case.

Looking back at the historical evolution of the registrant and user of the reexaminated trademark since its registration, it can be seen that Donglaishun Company licensed the reexaminated trademark to Beijing Daoxiangchun Food Co., Ltd. for use, which has its specific historical background and is completely out of good faith, and there is no possibility of forging the trademark license agreement afterwards in order to maintain the trademark registration. Beijing Daoxiangchun Food Co., Ltd. basically paid the license fee for the trademark "Daoxiangchun and Tu" in accordance with the provisions of the license contract before Ma submitted an application for cancellation of the trademark for three consecutive years. Therefore, the court held that under normal circumstances, as a rational market operator, unless there is a specific purpose, it will not put on the shelf the trademark use rights obtained by paying a considerable amount of trademark licensing fees.

How to understand the "three-year limit" of trademark cancellation?

The Purpose of the Trademark Law in establishing a cancellation system for stopping the use of registered trademarks for three consecutive years is to encourage and urge trademark registrants to use their trademarks and give play to the role of trademarks in distinguishing the sources of goods in the market. This system is neither a penalty for the trademark registrant's non-use, nor does it set an obligation to use it for the trademark registrant, but is only a measure to make the trademark sign return to the public domain, facilitate the registration of others, and activate trademark resources when the trademark registrant does not use it for three consecutive years, resulting in the role of the registered trademark not being played for a long time. At the same time, the Trademark Law itself also clearly stipulates that even a registered trademark that has ceased to be used for three consecutive years can be ordered by the Trademark Office to make corrections within a time limit and urge the registered trademark to be put into actual use; the cancellation of the registration of the trademark is not the only legal consequence of the unregistered trademark not being used for three consecutive years. Therefore, in administrative cases of non-use and revocation of trademarks for three consecutive years, it is necessary to comprehensively and accurately grasp the actual situation of the reexaminated trademarks involved in the case, take whether they have played a role in identifying the source of goods or services in market business activities as the fundamental basis, and finally select and determine the legal measures that should be taken.

For trademarks that have been registered for a long time and have a certain degree of popularity, especially the core trademarks of enterprises that have been identified as long-established brands, it is even more important to comprehensively examine and review the historical factors, current conditions, and the existence of historical factors and current conditions in the process of actual use of trademarks, starting from the basic purpose of the Trademark Law, which is conducive to encouraging fair competition, clearing the boundaries between commercial signs, curbing the malicious preemptive registration of other people's well-known commercial signs and "famous brands", and providing a harmonious and relaxed legal environment for the establishment and development of well-known brands. Objective reality in terms of future development and other aspects shall be comprehensively determined whether the reexaminated trademark has been used in a true, public and lawful manner.

At the same time, the second-instance judgment of this case further pointed out that in the examination process of the case of non-use and cancellation of a registered trademark for three consecutive years, it is necessary to fully reflect the value pursuit of the trademark law that encourages honesty and good faith and not to cheat, pay attention to preventing the improper use of the cancellation system for the registered trademark for three consecutive years, and prevent others from maliciously filing an application for cancellation of the registered trademark of the registered trademark registrant after obtaining the license to use the registered trademark, whether such an application for cancellation is initiated by the licensee of the registered trademark or initiated by others.

How to determine the actual use of a trademark?

In this case, the trademark "Daoxiangchun and Tu" was repeatedly assessed as a famous trademark in Beijing in 1995, 1999, 2001, 2005, 2011 and 2014, and Article 6 of the Measures for the Recognition and Protection of Famous Trademarks of Beijing Municipality, which came into effect since 2002, stipulates that an application for recognition of a famous trademark in Beijing shall submit the sales area and sales volume of the goods using the trademark in China, as well as the sales volume of the goods using the trademark confirmed by the relevant municipal departments or industry associations in the past three years 3. Evidence such as major economic indicators and quality such as market share, as well as the advertising of goods using the trademark in the past three years. According to the above-mentioned results of the recognition of famous trademarks in Beijing, the "Daoxiangchun and Tu" trademark has been used a lot of practical use and has a high popularity for a long time before the designated period, and the time includes a long period of time since the restructuring of Beijing Daoxiangchun Food Co., Ltd. in 2004, which proves from one side that Beijing Daoxiangchun Food Co., Ltd. has actually used the "Daoxiangchun and Tu" trademark according to the authorization of Donglaishun Company.

At the same time, the court of second instance also found in the course of the trial that Ma Mou, who had applied for cancellation of the "Daoxiangchun and Tu" trademark, had also applied for the registration of the "Daoxiangchun" trademark on December 7, 2016, but because the "Daoxiangchun and Tu" trademark of Donglaishun Company and the other two "Daoxiangchun" trademarks of Beijing Daoxiangchun Food Co., Ltd. were blocked, it was rejected by the Trademark Office. Ma applied to the Trademark Review and Adjudication Board for reexamination in this regard, and during the reexamination process, Ma made it clear that Ma transferred his own application for the trademark application for registration of "Daoxiangchun" to Beijing Daoxiangchun Food Co., Ltd. (the transfer application was withdrawn on April 26, 2018). The Trademark Review and Adjudication Board did not support Ma's request, and finally rejected Ma's application for registration of the trademark "Dao Xiang Chun and Tu".

In summary, although Donglaishun Company did not submit direct evidence of the actual use of the "Daoxiangchun and Tu" trademark during the specified three-year period, the evidence of the actual use of the "Daoxiangchun and Tu" trademark before and after the designated period can form a complete chain of evidence to prove that the "Daoxiangchun and Tu" trademark has actually been used on the approved goods. The court of second instance also comprehensively considered all the evidence in this case, holding that the trademark "Dao Xiangchun and Tu" had actually been used commercially during the designated period and should not be registered, thus making a second-instance judgment.

Of course, the trial of this case also put forward a wake-up call for the "old brands", whether they use the trademark themselves or allow others to use it, they must retain the evidence of the use of the trademark.

Relevant laws

Article 44 of the 2001 Trademark Law stipulates: "Where a registered trademark is used in any of the following acts, the Trademark Office shall order it to correct or cancel its registered trademark within a specified period of time:

(1) changing the registered trademark on its own;

(2) changing the name, address or other registration matters of the registrant of the registered trademark on its own;

(3) transferring a registered trademark on its own;

(4) Stopping use for three consecutive years. ”

Article 49 of the 2013 Trademark Law stipulates: "Where a trademark registrant changes the registered trademark, the name, address or other registration matters of the registered trademark, the registered trademark, the registrant or other registration matters on his own initiative, the local administrative department for industry and commerce shall order the correction within a time limit; if the correction is not made within the expiration of the period, the trademark office shall revoke its registered trademark."

If a registered trademark becomes the generic name of the goods approved for use or is not used for three consecutive years without a legitimate reason, any unit or individual may apply to the Trademark Office for cancellation of the registered trademark. The Trademark Office shall make a decision within nine months from the date of receipt of the application. Where there are special circumstances that require an extension, it may be extended for three months upon approval by the administrative department for industry and commerce under the State Council. ”

Editor: Wang Xi