Can the use without changing the distinctive features of the trademark be regarded as the use of the trademark
In the case of non-use cancellation of a registered trademark for three consecutive years, can the use without changing the distinctive features of the trademark be regarded as the use of the trademark? In the case of trademark cancellation disputes arising from the trademark “CARLI和图” No. 686918 (hereinafter referred to as the disputed trademark, see Figure 1), companies from Ireland and China debated whether the disputed trademark was actually and effectively used . A few days ago, the Beijing Higher People's Court made a judgment to answer the above questions.
The Beijing Higher People’s Court held that the evidence in the case only involved the “CARLI” logo or the “CARLI” logo under a dark background. The latter is the registered trademark No. 6103451 “CARLI” (see Figure 2), not for litigation. trademark. The evidence submitted by Shenzhen Shengyaqi Clothing Co., Ltd. (hereinafter referred to as Shengyaqi Company) and Shenzhen Karali Clothing Co., Ltd. (hereinafter referred to as Karali Company) cannot prove that the disputed trademark was held between July 8, 2013 and July 2016. During the period of July 7th (hereinafter referred to as the designated period), legal, real and effective commercial use was carried out on clothing products, and finally supported the appeal request of Connery Ireland Limited (hereinafter referred to as Connery Company) to cancel the disputed trademark.
It is understood that the disputed trademark was filed by Chongqing Jingxuanjing Industrial Co., Ltd. on February 11, 1993, and was approved for registration on April 21, 1994 for use in category 25 clothing products. In January 2005, with the approval of the Trademark Office of the former State Administration for Industry and Commerce (hereinafter referred to as the former Trademark Office), the disputed trademark was transferred to Karali Company and in January 2008 to Shengyaqi Company.
After the original Trademark Office rejected its request to revoke the disputed trademark, Connery Company applied to the Trademark Review and Adjudication Board of the former State Administration for Industry and Commerce (hereinafter referred to as the original Trademark Review and Adjudication Board) for a review.
After trial, the original trade review committee believed that the trademark use evidence such as the lease contract provided by Shengyaqi Company formed a complete chain of evidence, which can prove that it has effectively used the disputed trademark on clothing products during the specified period. Accordingly, the original trade review committee decided to maintain the disputed trademark.
Connery Company refused to accept it and complained to the Beijing Intellectual Property Court that the use evidence submitted by Shengyaqi Company could not prove that it had actually and effectively used the disputed trademark within the specified period. During the trial, Connery recognized the authenticity of the evidence submitted by Shengyaqi Company, but believed that Shengyaqi Company actually used the “CARLI” trademark No. 6103451 instead of the disputed trademark.
It is reported that the owner of the trademark "CARLI" No. 6103451 is Carali Company. The trademark was filed for registration on June 11, 2007, and was approved to be registered on clothing and other category 25 commodities on August 21, 2016.
The Beijing Intellectual Property Court held that although the trademark actually used by Shengyaqi Company during the designated period is not exactly the same as the trademark in dispute, the distinctive identifying part is still the letters "CARLI", which is basically the same as the logo of the trademark in dispute. It has not changed the distinctive features of the trademark in dispute, and will not affect its recognition by the relevant public, and can still be regarded as the use of the trademark in dispute. Accordingly, the court rejected Connery's claims.
Connelly then filed an appeal with the Beijing Higher People’s Court, claiming that none of the trademark use evidence submitted by Shengyaqi Company showed that it was a disputed trademark, but instead pointed to the No. 6103451 "CARLI" trademark, which was actually idle. , Should be revoked.
The Beijing Higher People's Court pointed out after trial that, considering the complexity of commercial activities, the use of trademarks that have not changed the distinctive features should also be regarded as the use of registered trademarks. However, in principle, the use of trademarks should be regulated. If the trademark is changed too much, it does not belong to the above-mentioned conditions, let alone the use of other trademarks to determine the use of the trademark. The owner of the disputed trademark owns multiple registered trademarks. Even though the actual use of the trademark is only slightly different from the disputed trademark, if it can be determined that the use is for other registered trademarks, the disputed trademark registration is maintained Propositions are generally not supported. In this case, the trademark in dispute was a combination of graphics and text, consisting of the letters "CARLI" and wavy line graphics. The relevant evidence submitted by Shengyaqi Company was shown as the "CARLI" logo or "CARLI" on a dark background. Logo, not a disputed trademark. In combination with the situation that Carali Company owns the “CARLI” trademark No. 6103451 that has been approved for registration on clothing and other commodities, it should be determined that the use behavior shown in the evidence submitted by Shengyaqi Company is for other registered trademarks and cannot be regarded as The disputed trademark was used. In summary, the court held that the evidence submitted by Shengyaqi Company and Karali Company could not prove that the disputed trademark was legally, genuinely and effectively used in the clothing products approved for use within the specified period, and accordingly revoked the judgment of the first instance and the original business. The review decision made by the judges.
