In April 2016, The Supreme People’s Court of People’s Republic of China released its Annual Review of the Intellectual Property Cases Handled by the court in 2015.  In this annual review, The Supreme People’s Court of People’s Republic of China (“Supreme Court”) summarized and analized 38 IP related cases that are of reference value. The cases concerned different aspects of intellectual property, including, patent, trademark, copyright, unfair-competition, new plant varieties, integrated circuit layout, intellectual property related litigation procedures and evidence.  A trademark non-use cancellation action handled by our firm is referenced as one of the 7 trademark related administrative dispute cases.

Chaoyang filed a non-use cancellation action with China Trademark Office in June 2010 against Trademark Reg.No. 1688809 for “B logo”, a mark registered on December 28, 2001 in Class 2 in respect of paint and coating, etc., for the interest of an important client which was not involved in the case for secrecy purpose.  We alleged that the petitioned mark had been out of use on the goods designated by the trademark registration for more than 3 consecutive years, so the registration of the mark should be cancelled pursuant to relevant provisions in Trademark Law.  China Trademark Office made a decision to maintain the petitioned registration, claiming that the evidence of use of the mark submitted by the trademark owner was sufficient to prove valid use of the mark.  An appeal was filed to Trademark Review and Adjudication Board (“TRAB”), which decided to cancel the registration, because it found that the submitted evidence of use could not prove use of the mark on the designated goods.  The trademark owner of the petitioned mark appealed to Beijing Intellectual Property Court, which decided in May 2015 to remand the TRAB decision, because it found that the submitted evidence of use could prove use of the mark on putty, which are not among the goods identification designated by the petitioned trademark registration but are very related and similar to those goods identification, e.g. paint and coating. 

The case was appealed to Beijing People’s High Court (“High Court”), which overturned the 1^st instance court decision on September 18, 2015, finding that use of the mark on putty should not be construed as use of the petitioned mark on its designated goods, so the petitioned mark shoud be cancelled.  Although the High Court’s decision is final and binding so the petitioned mark had been successfully cancelled, the trademark owner chose to file a complaint to the Supreme Court under the trial supervsion procedure which is available under Chinese legal framework, requesting a retrial of the case.  However, the Supreme Court has its discretion to decide whether to approve retrial of the case or not after receipt of such a complaint, and the Supreme Court decided against a retrial of the case.  As put in the annual review, the Supreme Court holds that only use of the mark on the goods designated by the trademark registration can be regarded as use of the registered mark, use of the mark on the goods similar to but not identical with those designated goods should not be regarded as use of the mark.