Case No.: No. (2018）11687 Jing 73 Administrative First, Beijing Intellectual Property Court
Petitioner: Dale Private Limited Company
Respondent: China National Intellectual Property Administration
Third Party: Shaoxing Dale Shirt Factory
[Basic Facts of the Case]
The basic facts of this case are as follows: in 2016, Dale Private Limited Company (petitioner) applied to the Trademark Review and Adjudication Board for reexamining the case of cancel trademark of Dale and its pattern (No. 147929) (hereinafter referred to as the disputed trademark). The Board held that the disputed trademark had been continued to be valid for the commercial use on "shirts, suits and uniforms" from October 31, 2013 to October 30, 2016 (hereinafter referred to as the designated period), and had not been commercially used on the approved products continuously, authentically and effectively. Accordingly, the disputed trademark sustained to be registered on "shirts, suits and uniforms", but was cancelled to be used on other goods. The petitioner rejected the decision on the ground that the evidences from the third party did not support that the disputed trademark was actually used on all the approved goods.
The focus of this dispute was if the disputed trademark was authentically, legally and effectively used on the commercial goods of “shirts, suits and uniforms” during the designated period. The Beijing Intellectual Property Court held that the Evidence 1 (Notice on Recognition of Shaoxing Famous Trademarks issued by Shaoxing Administration for Industry and Commerce) from the third party did not support that in the absence of other supporting evidences (sale and publicity of the goods), the disputed trademark was not proved to be used on the approved goods entering into market for sale during the designated period. The Evidence 2, i.e., the invoices of “Dale Box of Shirts” and “Dale Tags” bought by the third party only proved that the third party bought the packing material from others, but not that the disputed trademark was used on the approved goods like shirts for sale. To sum up, the recorded evidences did not support that the disputed trademark was authentically, legally and effectively used on the approved goods during the designated period.
Upon the above investigations, Beijing Intellectual Property Court approved the petitioner’s request and revoked the Withdrawal of the Reexamination Decision on Disputed Trademark.
As stipulated by China’s Trademark Law, the registered trademark shall be cancelled if it ceased for three consecutive years without good reasons, which is to reduce the waste of trademark resources and release idle trademark resources. The use of trademark refers to the authentic, legal and effective use for commercial purposes, including the use on the goods, the packings, containers, and the trading documents, or the use for advertises, exhibitions, and other commercial activities. In practice, some owners of trademarks may “symbolically” use the registered trademarks to avoid the cancellation. Therefore, the court shall focus on the investigations of the practical use of the trademarks in the trials.