In trademark opposition and invalidation cases, if the use evidence could prove the prior use and reputation of the cited mark, it is very likely to be a key factor against the adversary. In cancellation of non-use for three consecutive years and the review cases therefore, if there is no effective evidence to prove the registered trademark has been used openly, factually and legally, the registered trademark is very likely to be cancelled for registration. In such cases, the use evidence actually plays the role of a shield for protection. Article 59 of the amended Trademark Law which took effect from May 1, 2014 stipulated to give a certain extent of protection to the trademark which is used earlier, which highlights the meaning and importance of preserving and collecting use evidence. The author is to illustrate how to preserve and collect effective use evidence according to the relevant laws, regulations and the cases for readers’ reference.
I. Preservation and collection of use evidence in trademark opposition and invalidation cases, etc.
In trademark opposition and invalidation cases, when the involved mark is a preemptively filed or registered trademark of other’s well-know trademark, or a trademark which has been used earlier by others and obtained certain influence, the opponent or the applicant of the invalidation may file an opposition or invalidation according to Article 13 or Article 32 of the existing Trademark Law. The proof of prior use and reputation of the cited mark is very important to the opponent and the application of the invalidation during the examination and adjudication.
1. Proof of well-known trademark
Article 14 of the existing Trademark Law stipulated the fol1owing factors shall be taken into account in establishment of a well-known mark:
(1) extent of reputation of the mark among the relevant public;
(2) time for continued use of the mark;
(3) consecutive time, extent and geographical area of advertisement of the mark;
(4) records of protection of the mark as a well-known mark; and
(5) any other factors relevant to the reputation of the mark.
And Article 9 of the
Regulations for the Recognition and Protection of Well-known Trademark stipulated the following materials can be used as evidential materials which are in accordance with Article 14 of the Trademark Law:
(1) The relevant materials proving the degree to which the trademark is known among the relevant public;
(2) The relevant materials proving the length of continuous use of the trademark, such as materials related to the use, history and scope of registration. If the trademark is an unregistered trademark, the materials shall prove continuous use of the trademark of not less than 5 years. If the trademark is a registered mark, the materials shall prove the trademark in registration of not less than 3 years or has been continuously used for not less than 5 years;
(3) The relevant materials proving the continuous length of time, degree and geographical scope of any publicity work for the trademark, for example, materials related to the way of advertising and publicity and promotion, geographical scope, types of advertising media and amount of investment in advertising, etc. in the recent three years;
(4) The relevant materials proving the trademark has been protected as a well-known trademark in China or other countries or areas;
(5) Other evidence proving that the trademark is well-known, for example, materials related to the sales revenue, market share, profits and tax, and sales regions of the main commodities that use the trademark in the recent three years.
“Three years” or “five years” prescribed in the preceding paragraph means “three years” or “five years” prior to the application date of the opposed mark in the trademark opposition case, the application date of the trademark requested for invalidation in invalidation case, and the date of the request for well-known protection in investigation against trademark violation cases.
Furthermore, page 107 of the
Trademark Examination and Adjudication Guidelines stipulated the following evidential materials could be used to prove the factors of a well-known trademark prescribed above:
(1) contracts, invoices, delivery notes, bank deposit receipts, import and export documents, etc. of the goods and services in respect of the trademark;
(2) relevant materials of the scope of the sales area, distribution of sales network, sales channels and manners, etc. of the goods and services in respect of the trademark;
(3) media advertisements and comments of radios, films, TVs, newspapers, journals, networks, outdoor media, and other materials of promotional activities in respect of the trademark;
(4) relevant exhibition and exportation materials of the goods and services in respect of the trademark;
(5) relevant materials showing the earliest use time and the continuous use situation of the trademark;
(6) registration certificates of the trademark in China, foreign countries and areas;
(7) relevant documents showing the trademark once has been recognized as well-known trademark and given protection by the trademark administrative authorities or the judicial organs, and the situation of the trademark being infringed or the situation of counterfeits;
(8) evaluation report of the value of the intangible asset of the trademark made by the qualified evaluation organization;
(9) statistics of sales volume, profit and tax amount, and output, and statistics of ranking, advertisement spending of the goods and services in respect of the trademark released or issued by the credible authorities and industry associations;
(10) situation of rewords in respect of the trademark;
(11) other materials which can prove the reputation of the trademark.
The above evidence should be limited to that formed before the application date of the involved mark in principle.
2. Proof of prior use of the trademark
The existing Trademark Law and
Implementation Rules of Trademark Law have no express stipulation as to how to prove the prior use and certain influence of a trademark. However, page 123 of the
Trademark Examination and Adjudication Guidelines stipulate the following with reference to the standard of determination of well-known trademark:
To determine whether a trademark is of certain influence, the following factors should be taken into account comprehensively based on the situation of the case, but it is not a precondition for the trademark to meet all the factors listed below:
(1) situation of awareness of the trademark among the relevant public;
(2) consecutive time and geographical area of the use of the trademark;
(3) time, manner, extent, and geographical area of any promotion of the trademark; and
(4) any other factors relevant to the influence of the trademark.
The above factors may be proved by the following evidential materials:
(1) contracts, invoices, delivery notes, bank deposit receipts, import and export documents, etc. of the goods and services in respect of the trademark;
(2) relevant materials of the scope of the sales area, sales channels and manners, etc. of the goods and services in respect of the trademark;
(3) media advertisements and comments of radios, films, TVs, newspapers, journals, networks, outdoor media, and other materials of promotional activities in respect of the trademark;
(4) relevant exhibition and exportation materials of the goods and services in respect of the trademark;
(5) relevant materials showing the earliest use time and the continuous use situation of the trademark;
(6) situation of rewords in respect of the trademark;
(7) other materials which can prove the trademark is of certain influence.
The above evidence should be limited to that formed before the application date of the involved mark in principle.
Comparing the factors and evidential materials of the factors in the determination of a well-known trademark and a trademark which is of certain influence, it can be seen without difficulty that the requirements are basically consistent. The only difference is that the reputation of a well-known trademark is higher and the examination of the use and reputation is stricter, particularly it is required to prove the continuous use, promotion, sales, etc. of the trademark in the 3 or 5 years prior to the application date of the involved mark. The reputation of a prior used trademark which is of certain influence is lower than that of a well-known trademark, and thus the requirement on the amount and type of evidence is relatively looser, and there is no strict requirement of “3 years” or “5 years” of use in time.
3. Interpretation of common use evidence
Based on the above basic requirements and my practical experience, the author is to interpret the following common use evidence:
(1) Relevant materials showing the earliest use time and the continuous use situation of the cited mark — such materials include meanings on three levels: firstly, if the cited mark is of very strong distinctiveness, it would be important to prove or explain the origin of the trademark; secondly, to prove the earliest use time of the cited mark in China may put the application date of the involved mark in a clear comparison, which makes the involved mark to be suspected of imitating, reproducing or translating the prior used cited mark; thirdly, the evidential materials to show the continuous use of the cited mark in China is particularly important. The cited mark is not only prior used, but also established a certain reputation or very high reputation in the industry, to which extent it can be established that the applicant of the involved mark should have been aware of the prior use and value of the cited mark, so as not to imitate, reproduce, translate, or even preemptively register it. Usually, the continuous use includes the operation, sales, promotion, etc. of the trademark in commerce.
(2) As for the evidence of the owner of the cited mark in business activities, usually the cited mark owner may collect its company register and the business license, certificate of approval, etc. of its Chinese subsidiary and the branch company. The company register is the entity certificate issued by the authorities. Usually, the company register includes the information of the establishment time, scope of business, etc. of the company. And the business license, certificate of approval, etc. of the Chinese subsidiary and the branch company can prove the investment relationship between the cited mark owner and the Chinese companies, the earliest time of their operation in China and the continuous time. In a case represented by the author, as for this point, the cited mark owner submitted the company register issued by the Bureau of Legal Affairs in Japan as its entity certificate. And it also submitted business registration documents, business license, certificate of approval, etc. of its wholly owned Chinese subsidiary from 1980’s to 2005 (before the application date of the opposed mark). There was no gap in time of these certificates and they proved the continuous operation of the subsidiary in the past 20 years in China. The above certificates could not directly prove the use of the cited mark. Thus, to prove the continuous use of the cited mark, it needs to be combined with the trademark use evidence in sales and promotion.
(3) The relevant evidence of sales of the product of the cited mark includes contracts, invoices, delivery notes, bank deposit receipts, import and export documents, tax certificates issued by the tax authorities, audit reports, etc. in commerce. Among them, the sales contracts and invoices are the most commonly used group of evidence. The sales contracts and invoices usually should include the information of the trademark, goods, etc. The group of the two may prove the sales time, areas, amount, etc. Moreover, the invoices, as the certificate of the performance of the contract, are necessary in business. Since the invoices in China are administrated and supervised by the national tax authorities, usually, a notarized copy which is consistent with the original could be easily admitted. The invoices issued by the foreign companies are difficult to be ascertained by the Chinese authorities. Thus, in addition to have the invoices notarized and legalized in the local country, it is also necessary to collect supporting materials such as delivery notes, bank deposit receipts, import and export documents, etc. It is seen that the audit reports, tax certificates issued by the tax authorities, etc. showing the economic statistics of the relevant owners can be used as an important reference in the determination of trademark reputation by the Trademark Review and Adjudication Board (TRAB) in their examination. However, the situation has occurred in the administrative litigation that the gap between the data of the audit reports made by the Accounting Firms and that of the enterprise’s annual business inspection is too large and the fraudulent audit report, etc. At present, the TRAB is more objective and prudent in the admission of such evidence and they have attached more importance on a comprehensive examination of the sales contracts, invoices, etc.
(4) The evidence of advertisement and promotion of the cited mark includes advertisement contracts, invoices, newspapers, journals, Internet media advertisements, self-made company brochures, product catalogs, etc. Firstly, the advertisement contracts and invoices refer to the contracts and the invoices to support the performance of the contracts between the cited mark owner or its Chinese affiliated companies and the advertisement companies. Such materials can be a relatively direct evidence to prove the amount, time, territory, etc. of the advertisement released by the cited mark owner on radio, films, TV, newspapers, journals, networks, outdoor media, etc. Secondly, as for the advertisements in newspapers, journals, etc., by entrusting the China National Library, a substantial number of authoritative newspapers, journals, etc. may be collected. Such materials can be a relatively direct evidence to prove the continuous use time, area, trademark image, designated goods, etc. With the popularity of the Internet, there are more and more advertisements on network media. Since network information is updated quickly and can be easily altered, it is advisable to conduct notarization of the web pages in preserving such evidence. Thirdly, since the company brochures, product catalogs, etc. of the cited mark owner are printed by themselves, a proper amount of such evidence is enough so as to support the effective use of the trademark.
(5) The relevant exhibition and export materials of the trademark include exhibition certificates, pictures of the booth, invoice of the exhibition fee, prints of the sponsor, reports, etc. It is important to have the information as the cited mark, the goods in exhibition, the exhibition time and address, etc. fully preserved.
(6) The materials of awards of the cited mark and those showing the ranking of the goods in respect of the cited mark and the cited mark owner. The above mentioned awards are better to be issued by the authoritative Chinese organizations and the ranking materials are better to be made by the national industry associations registered by the Chinese Ministry of Civil Affairs regarding the ranking of the industry, or from the yearbooks published by the State Statistics Bureau or local governments. The awards or ranking outside China, such as having the rank of a Fortune 500 company is also of some reference value.
In practice, in addition to the above mentioned 6 types of evidence, some special evidence may be collected according to the specific situation of the case. The following is to discuss and illustrate the light reflected by the combination of the common and the special evidence.
Case 1: Trademark dispute administrative litigation between SHERATON INTERNATIONAL IP, LLC V. TRAB, Yan Rong (natural person)
（Dispute mark No.4668880）
（Cited mark 1 No.777913）
（Cited mark 2 No.771447）
In this case, the disputed mark was a preemptive registration of the cited marks on light apparatus in Class 11 by the natural person Yan Rong. Sheraton International IP, LLC (hereafter referred to as “Sheraton IP”) filed dispute cancellation against the disputed mark based on its prior registrations on “hotels; restaurants, etc.” in Class 42 and argued the cited marks were well-known trademarks. Sheraton IP mainly submitted the following evidence: ① affidavit made by the Vice President of Sheraton IP (including the list of registration of trademarks “SHERATON” and “喜来登” around the world, the list of more than 400 hotels with “SHERATON喜来登” brand around the world, the list of more than 60 hotels with “SHERATON喜来登” brand in Asia Pacific, the list of more than 20 hotels with “SHERATON喜来登” brand in Mainland China, etc.); ② advertisements and reports in Chinese newspapers and magazines such as
Business Travelers, Travel Guide, Modern Weekly, Tourism, etc. ③ decisions in which the trademarks “SHERATON” and “喜来登” were recognized as well-known, including (2010) Trademark Opposition No.1415 Decision regarding trademark “SHERATON”, (2010) Trademark Opposition No.1416 Decision regarding trademark “喜来登”, etc.
Among them, the evidence ① affidavit was usually weak in proof, if without objective evidence. However, the evidence ② various newspapers and magazines were of strong objectiveness and the content thereof reflected the content of the evidence ①, which could support each other and prove the continuous use and reputation of the cited marks in China. The evidence ③ was one of the most important pieces of evidence in this case. The historic recognition of well-known trademark and protection records were particularly important to prove the well-known status of the cited marks. However, if without evidence ① and ②, it would have been very difficult to have the cited marks recognized as well-known trademarks again with the evidence ③ alone. According to the case by case examination principle, the historic fact of well-known recognition was not absolutely applied to this case. Thus, the combination of evidence in ①, ② and ③ was very meaningful.
The evidence in this case was admitted in the litigation of second instance by Beijing Higher Court and the cited marks were recognized well-known trademarks.
Case 2: Trademark opposition review administrative litigation between WESTIN HOTEL MANAGEMENT, L.P. V. TRAB, Kaihua Jinsong Yuanzhuang Food Mall
（Opposed mark No.6512348）
（Cited mark 1 No.773944）
（Cited mark 2 No.773940）
In this case, the opposed mark was preemptively filed on “coco products; moon cakes; pastry, etc.” in Class 30 by Kaihua Jinsong Yuanzhuang Food Mall. WESTIN HOTEL MANAGEMENT, L.P. (hereafter referred to as “Westin Hotel”) filed an opposition against the opposed mark based on its prior registrations on “hotels; restaurants, etc.” in Class 42 and argued the cited marks were well-known trademarks. Westin Hotel mainly submitted the following evidence: ① introduction of Westin hotels from Baidu Encyclopedia, list of the hotels and pictures of the outside view of the hotels, etc.; ② advertisements and reports in various Chinese newspapers and magazines such as
People’s Daily, Liberation Daily, Beijing Youth Daily, Hainan Daily, Fortune, Hotel Modernization, etc. and the records from official year books around China; ③ audit reports, invoices, contracts of Westin Hotel; ④ various certificates of award to Westin Hotel; ⑤ Various decisions made by the TRAB regarding protection of trademarks “威斯汀”和“WESTIN”, etc.
In this case, the above evidence ② played a very important role. Firstly, the newspapers and magazines collected from the China National Library are usually the most authoritative with large circulation around China. Secondly, the official year books were made by the Statistical Bureau in China. They could prove the ranking of Westin Hotel in China from 1995 among the hotels in various places and the revenues. The objectiveness and authority of such evidence and the authoritative data could have affected the discretion of the judges.
Therefore, the above evidence ①, ②, ③, ④ and ⑤ together formed a complete chain and proved the continuous use and reputation of the cited marks in China. The cited marks were recognized as well-known in the first instance of the administrative litigation by Beijing First Intermediate Court.
II. Preservation and collection of use evidence of registered trademarks
According to Article 49 of the existing Trademark Law, without justified reasons, the use of the registered trademark has been ceased for three consecutive years, any organization or individual may request the Trademark Office to cancel the registered trademark. In this respect, a trademark is not registered once and for all. The protection to a registered trademark originates from the value of the trademark through use. Thus, the procedure of cancellation of non-use for 3 consecutive years can clear the trademarks which are stopped for use for long time. While for trademark owners, it is of great meaning to preserve effective use evidence of the registered trademark.
According to Article 48 of the existing Trademark Law, the use of trademarks prescribed in this law refers to the use of trademarks on the goods, packages or containers thereof and commodity trading instruments, or use of the trademarks in advertisements, exhibitions and other commercial activities to identify the source of the goods.
The
Trademark Examination and Adjudication Guidelines stipulated further the specific manner of use of the trademark on the designated goods include:
(1) attaching the trademark on the goods, packages, containers, tag, etc. therefore by directly affixing, engraving, ironing or knitting, etc., or to use the trademark on the labels of the goods, product specifications, brochures, price lists, etc.;
(2) using the trademark on business instruments of the goods, including on the sales contracts, invoices, bills, receipts, goods import and export inspections and quarantine certificates, Customs declaration documents, etc.;
(3) using the trademark in the media as in radio, TV, etc., or the release of the trademark on publications issued to the public, and on advertisements in the manner of advertisement signs, direct mail or in other manners for the trademark or the goods bearing the trademark, etc.;
(4) using the trademark in exhibitions and exportation, including on printed matters and other materials provided in exhibition and exportation;
(5) using the trademark in other means in complying with the laws and regulations.
And the specific manner of use of the trademark on the designated services include:
(1) using the trademark directly on the place where the service is provided, including the service brochures, signs, decorations, clothes of the staff, posters, menus, price lists, gift coupons, office stationery, letter paper, and other articles relating to the designated services;
(2) using the trademark on the documents relating to the service, such as invoices, remittance certificates, service agreements, repair and maintenance certificates, etc.;
(3) using the trademark in the media as in radio, TV, etc., or the release of the trademark on publications issued to the public, and on the advertisements in the manner of advertisement signs, direct mail or in other manners for the trademark or the services in respect of the trademark, etc.;
(4) using the trademark in the exhibition and exportation, including on the printed matters and other materials provided in the exhibition and exportation;
(5) using the trademark in other means in complying with the laws and regulations.
Moreover, the evidential materials to prove there is no circumstance that the involved registered mark is not in use for 3 consecutive years should meet the following requirements:
(1) could show the image of the involved mark;
(2) could show the involved mark is used on the designated goods/services;
(3) could show the user of the involved mark, including both the trademark owner himself, and the licensee of the trademark. If the trademark is licensed, the owner should prove the license relationship;
(4) could show the date of use of the involved mark, and the date should be within the 3 years before the non-use cancellation application date;
(5) could prove the involved mark is used within the territory in which the Trademark Law shall govern;
(6) could prove the involved mark is used openly, factually and legally in business activities.
The above Guidelines stipulated the specific types of use evidence and differentiate the evidence properly according to the different features of the trademarks for goods and services. And finally the requirements on use evidence provide a good guidance to the trademark owners for their standardized routine use of the trademark.
According to the statistics from the Trademark Office, the trademark applications totaled 1,938,000, and the applications which have been examined totaled 2,066,000 by the end of November in 2014, with a year-on-year growth of 13.9% and 67.4% respectively. The accumulative number of trademark applications reached 15,179,000 and that number of trademark registrations reached 9,903,000, with valid registrations 8,404,000. The existence of the prior trademark application or registrations directly affects the application of a latter trademark which is identical with or similar to the prior trademark on identical or similar goods/services to a certain extent. Thus, with the increase of the trademark applications, the cancellations based on non-use for 3 consecutive years has increased as well. To maintain the trademark right and validity of the registration, the trademark owners in one aspect need to standardize their routine use of the trademark, and in another aspect need to preserve effective use evidence of the registered trademark. The following is to discuss and illustrate the situation of use evidence based on typical cases.
Case 3：Review of Trademark Cancellation between NEWTEK CORP. V. TRAB and NGK SPARK PLUG CO., LTD.
The trademark “NTK” No.613608 was filed on October 15, 1991 by NGK SPARK PLUG CO., LTD. and granted registration on October 11, 1992 on “oxygen sensor; ceramic filter for communication equipment, etc.” in Class 9. NEWTEK CORP. filed a cancellation with the CTMO against the trademark based on non-use of 3 consecutive years. Through examination, the CTMO decided to cancel the trademark “NTK” since NGK SPARK PLUG CO., LTD. did not submit evidence to prove the use of the trademark from December 3, 1996 to December 2, 1999.
NGK SPARK PLUG CO., LTD. was not satisfied and filed a review with the TRAB and submitted effective use evidence which was admitted by the TRAB. The TRAB thus maintained the registration. NEWTEK CORP. was not satisfied and filed administrative litigation. The court of both the first and the second instance held that the evidence was insufficient to prove the effective use of “NTK” in the prescribed period. NGK SPARK PLUG CO., LTD. applied a retrial with the Supreme Court which held the use evidence of “NTK” was effective and maintained the decision made by the TRAB.
In this case, NGK SPARK PLUG CO., LTD. mainly submitted the following evidence: the relevant invoices during 1996~1999 in which the addressor was NGK SPARK PLUG CO., LTD. and the addressee was Motorola (China) Electronics Co., Ltd. The delivery was from Nagoya, Japan to Tianjin, China through BAX GLOBAL. The goods were “NTK” oxygen sensors. The evidence was notarized and legalized and the translation was also submitted. The court of both the first and the second instance denied the effectiveness of the evidence on the grounds that the evidence was made by NGK SPARK PLUG CO., LTD itself. However, the Supreme Court held the evidence complied with the requirement in formality and admitted the authenticity. And combining the statement made by the shipper BAX GLOBAL and submitted in the second instance, the Supreme Court admitted this group of evidence. From the above, it can be seen that it is relatively stricter as to the self-made evidence. Except that the evidence should meet the formal requirement as being notarized and legalized, the owner should also submit supporting evidence.
In addition, NGK SPARK PLUG CO., LTD. also submitted dozens of invoices made by Hong Kong NGK during 1996~1999 to prove that it had sold “NTK” filers, etc. to mainland China. The evidence was formed in Hong Kong but the notarization and legalization was conducted in Japan. The court of both the first and the second instance held it did not comply with the formal requirement of evidence and did not admit it. However, NGK SPARK PLUG CO., LTD. submitted the annual financial report of Hong Kong NGK to prove that NGK SPARK PLUG CO., LTD. was the investor and the exclusive supplier of Hong Kong NGK and also explained that Hong Kong NGK was a subsidiary held by NGK SPARK PLUG CO., LTD. and Hong Kong NGK needed to report its financial status and present the relevant financial documents. Thus, the above invoices were from Japan and notarized and legalized in Japan. The Supreme Court admitted the reasonability of the above explanation. What we learned from the above is that usually the formal requirement of notarization and legalization on evidence should be conducted in the place where the evidence is formed, which is a general principle. Under the circumstance that it is difficult to complete the procedure in the place where the evidence is formed, it is necessary to have a reasonable explanation and interpretation. However, whether such explanation and interpretation can be admitted depends on the reasonability of the explanation and interpretation and the judges’ comprehensive understanding and impression of the case. Due to the specialty of such matters, it should be treated case by case.
III. Preservation and collection of evidence to prove trademark prior use right
According to Article 59(3) of the existing Trademark Law, before the registration application is filed, where an identical or similar trademark has been used on identical or similar goods earlier by others and obtained certain influence, the holder of the registered trademark has no right to prevent others’ continuous use of the trademark within the original scope, but he may request the prior user to attach appropriate identification signs.
The author believes the above law which provides a certain protection to the trademark used earlier is a development in the third amendment to the Trademark Law. In the Chinese trademark law system, the main principles include that an exclusive right to use a trademark originates from registration, and the first-to-apply takes priority and first-to-use is complementary. The former is mainly reflected in Article 3 of the Trademark Law that the trademark approved for registration by the Trademark Office is a registered trademark and the registrant enjoys an exclusive right to use the trademark, which is protected by the law. The latter is mainly reflected in Articles 13, 31 and 32 of the Trademark Law, that is, as for the trademark applications filed on the same day, the first-to-use principle will be applied; as for the well-known trademark and trademarks which have been used and obtained certain influence, the ownership of the mark would be determined according to the time of use and reputation of the trademark. It can be seen that Article 3 and Article 31 of the Trademark Law stipulated the grant of trademark right, while Article 13 and Article 32 stipulated challenge to the trademark. However, Article 59 is clearly different from them in content which stipulated both the prior use right of a trademark and the trademark exclusive right, which provides a certain protection and legal basis for the continuous use of a trademark within the original scope according to the prior right and the influence of that trademark which is used earlier or a trademark that is preemptively applied or registered by others and there is no way to challenge the preemptive mark due to some objective reasons.
Under the existing laws and regulations, there is no further interpretation regarding “prior use and certain influence” prescribed in Article 59. With a reference to “nor unfair means be used to pre-emptively register the trademark of some reputation another person has used” prescribed in Article 32, it may be presumed that the evidence of the two shares something in common, that is, the use evidence regarding Article 59 can be collected with a reference to the 6 types of common evidence mentioned in the above Point 3 of the Part I. However, it is still not clear in respect of “the date of use of the prior used trademark”, “the extent of a certain influence” and “the original scope of use”. It still needs to have a clear guidance from trademark legislation and administrative and judicial practice. The author raised the following three questions to seek answers to in practice in the future.
1. The relationship between the use date of the prior used trademark and the application date and use date of the registered trademark
Article 59(3) of the existing Trademark Law stipulated the prior used trademark refers to “before the registration application is filed, an identical or similar trademark which has been used on identical or similar goods earlier by others and obtained certain influence”. It can be seen that the use date of the prior used mark should be earlier than the application date of the later registered trademark. However, if the later registered trademark has been used already, is it necessary for the use date of the prior used mark not only earlier than the application date of the later registered trademark, but also earlier than the earliest use date of the later registered trademark? The author believes the answer should be yes. As for the trademarks both have been used, it needs to have evidence to prove the respective use dates of the trademarks to confirm the ownership so as to determine whether the trademark can be continuously used.
2. Definition of “certain influence”
The definition of “certain influence” prescribed in Article 59 of the existing Trademark Law should be taken a reference to “a trademark which has been used and obtained certain influence” prescribed in Article 32 of the Trademark Law. For example, in terms of territory, the influence should be within Mainland China. However, whether the extent of certain influence is the same?
“A trademark which has been used and obtained certain influence” prescribed in Article 32 of the Trademark is prohibited to be preemptively registered. The applicant of the preemptively filed trademark knows or should know the market influence of such trademark before the application date of the preemptively filed trademark. However, taking a trademark which is used earlier prescribed in Article 59(3) as a plea of trademark infringement, should the market influence reach that level as in Article 32? Whether “a certain influence” can be admitted based on the use of the trademark in a certain amount and a certain period of time?
3. Definition of “original scope”
The Notice of Questions Regarding the Continuous Use of Service Mark issued by the State Administration of Industry and Commerce (Gongshangbiao (1994) No.216, abolished in 2004) once stipulated that when using the prior used service mark continuously, the user should not expand the territory of the service mark; should not add service items to the mark; should not change the device, word, color, structure, font, etc. of the service mark, unless the change aims to strengthen the difference from others’ registered service mark; should not assign or license the service mark to others; otherwise, it would be deemed an infringement to others’ exclusive right to use a registered trademark.
With a reference to the above stipulation, it can be presumed that the “original scope” prescribed in Article 59(3) of the existing Trademark Law should include that the trademark image and goods in use both should not exceed the original scope. However, whether the “scope of territory” should also not be exceeded? In an era with frequent online trade, it seems too harsh to the prior user. On the contrary, if the prior user has used the mark earlier in online trade, the limitation on territory would have no function at all.
Since the amended Trademark Law took effect from May 1, 2014, there are not many cases involving the stipulation of Article 59(3) of the Law. According to the latest news in December 2014, Beijing Chaoyang District Court protected trademark prior use right in trademark infringement litigation for the first time. The case summary is as follows:
Case 4：Trademark infringement of Ms. Tan V. Shang Daniel Barbershop
Shang Daniel Barbershop (hereafter referred to as “Shang Daniel”) was established in 2008 and now had four shops which continued to use “尚丹尼造型 (Shang Daniel Designing)” on its shop sign and direction board. It was suddenly sued by Ms. Tan who was a family member of its former employee and requested the Barbershop to stop using the word “Shang Daniel” and compensate damages in the amount of 200,000 yuan, since Ms. Tan registered the trademark “尚丹尼” on “beauty Solon; barbershop, etc.” in Class 44. On December 8, 2014, Beijing Chaoyang District Court made the judgment of the first instance and determined Shang Daniel used the trademark earlier and obtained certain influence in a certain scope, which complied with the stipulation of Article 59(3) of the Trademark Law. Ms. Tan had no right to prevent the continuous use of the trademark by Shang Daniel, and thus rejected all the claims of Ms. Tan.
(Platinff’s registered trademark No.11358870)
(Trademark used by the defendant in the shop sign)
In this case, the defendant submitted materials such as a business license, etc. To prove its establishment in 2008 and its opening of 4 shops continuous in Beijing; it also submitted the web pages of the promotion of its trademark and shops from Populace Comments Website and Sina Microblog, and the relevant service contracts, etc. The court held the above evidence could support the fact that Shang Daniel has used “尚丹尼” as trademark and had obtained certain influence in a certain scope.
It can be seen from the above that Chaoyang District Court mainly considered the fact of prior use and a certain influence of the trademark when giving protection. However, from the evidence, the requirement is not as strict as that to “a certain influence” prescribed in Article 32 to prohibit preemptive registration of a prior used trademark.
Moreover, it was learned that in this case the trademark No.11358870 has not been in actual use. This fact also played an important role in the judges’ determination. At present, the existing Trademark attaches more importance on the actual use of the trademark. And in business, the protection to an actually used trademark is strengthened gradually while the protection to a trademark without use is decreased. In addition to the trademark prior use right prescribed in Article 59(3) of the Trademark Law as above mentioned, Article 64 stipulates “where the registrant fails to prove the actual use of the trademark in the previous years and other loss he suffered from the infringement, the alleged infringer shall not bear the liability of compensation for the damages”. It can be seen that the trademark use evidence will play a more important role in civil infringement litigation in future.
In addition, the fact that the plaintiff was a family member of the defendant’s former employee may have affected the discretion of the judges more or less.
The above case was the first case of a prior used trademark which was given protection. And that was the only one case found until now. Thus, the standard and manner of “prior use” and “certain influence” could not be concluded only from this case. But it was a good example in respect of what evidence would be admitted, and the extent of “certain influence”, etc.
To sum up, the author has made a summary regarding the preservation and collection of use evidence in trademark opposition and invalidation cases, etc., preservation and collection of use evidence of registered trademarks, and preservation and collection of evidence of trademark prior use right, together with concrete laws and regulations and the cases. There is both overlap and different features of the use evidence to these three aspects. The right owner may take reference to each of the above aspects in respect of the specific manner in the preservation and collection of evidence in a specific case. Moreover, the evidence in a specific case should be preserved and collected properly according to the type and the features of the case. In light of the relevant laws and regulations of the Trademark Law, judicial interpretation, examination standard are still not published. The specific manners in practice in future may be different. Thus, this topic is worthy of further attention.
References:
1.
Trademark Law
2.
Regulations for the Recognition and Protection of Well-known Trademark
3.
Trademark Examination and Adjudication Guidelines
4.
Legal News No.63 of TRAB of State Administration of Industry and Commerce
5.
Elements of Prior Use Plea in trademark Infringement Case (
Chinese Trademark, Periodical No.11, 2014)
6.
Administrative Judgment (2013) Beijing Higher Final No.960
7.
Administrative Judgment (2014) Beijing Intermediate First No.678
8.
Administrative Judgment (2013) Supreme Court Administrative Retrial No.19
9. Date published by the Trademark Office (September 3, 2014)
http://sbj.saic.gov.cn/sbyw/201409/t20140911_148272.html
10. Case report “A Family Member of Former Employee Preemptively Registered the Trademark The Claim of Lawsuit for Compensation was Rejected” on December 18, 2014 from Chaoyang Court Net
http://bjgy.chinacourt.org/article/detail/2014/12/id/1499923.shtml
