1. Case Index

(1) Case Number

First instance case number: Beijing No. 1 Intermediate People’s Court (2012) No. 1 Zhixingchu Zi No. No. 684 (concluded on July 23, 2012)

Second instance case number: Beijing Higher People’s Court (2012) Gao Xingzhong Zi No. 1513 (concluded on December 11, 2012).

(2) Parties

Plaintiff (appellant): Cathay Financial Holdings Co., Ltd. (referred to as Cathay Financial Corporation)

Defendant (appellee): The Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (referred to as the Trademark Review and Adjudication Board)

II. Introduction to the case

On June 26, 1995, Cathay Life Insurance Co., Ltd. submitted a request to the State Administration for Industry and Commerce. The Trademark Office of the General Administration of China (referred to as the Trademark Office) filed an application for registration of the word trademark "Cathay Life" No. 963862 (referred to as the review trademark). The registration date was March 14, 1997, and it was approved to be used in the following service items of Class 36 of the International Classification Top: Banking, trust funds, finance, valuation (insurance, banking, real estate), trusts, marine fire insurance, marine insurance, mortgage banks, savings banks, insurance brokers, life insurance, insurance consulting, financial information, insurance information, real estate Rental, real estate agency, real estate brokerage. In 2002, the reexamined trademark was approved by the Trademark Office and transferred to Cathay Financial Corporation. After renewal, the exclusive right period will be until March 13, 2017.

On January 2, 2004, the Trademark Office accepted the cancellation application filed by Li Zhucheng on the grounds that the review trademark had ceased to be used for three consecutive years from January 2, 2001 to January 1, 2004. After review, the Trademark Office made a "Decision on Cancellation Application for Stopping Use of the Registered Trademark No. 963862 'Cathay Life' for Three Consecutive Three Years" (referred to as the Cancellation Decision) on March 21, 2005. The content is as follows: Cancellation of the review trademark in "Real Estate Leasing" , real estate agency, real estate broker" service; the original "Trademark Registration Certificate" No. 963862 is invalid, and a new "Trademark Registration Certificate" will be issued by the Trademark Office and announced. The main reason is: the trademark use evidence provided by Cathay Financial Company is invalid, and Li Zhucheng’s reason for revocation is established.

Cathay Financial Corporation was dissatisfied with the revocation decision and applied to the Trademark Review and Adjudication Board for review on April 8, 2005. It also submitted Evidence 1 (i.e.: a copy of the industry standard classification in Taiwan) and Evidence 1 to the Trademark Review and Adjudication Board. 2 (i.e.: a copy of the press release that the Taiwan authorities conditionally allow Taiwanese businessmen to invest in some real estate businesses in the mainland) and evidence 3 (i.e.: a copy of the "Measures for the Administration of Representative Offices of Foreign Insurance Institutions in China").

On August 8, 2011, the Trademark Review and Adjudication Board made the Trade Pingzi [2011] No. 16562 decision on the cancellation review decision of the "Cathay Life" trademark No. 963862 (referred to as the sued decision):

Exhibit 1 and Evidence 2 submitted by Cathay Financial Company are restrictions imposed by Taiwan on Taiwanese businessmen engaged in real estate development to invest in the real estate industry in the mainland. This restriction has existed since the review of the trademark application registration. The investment restrictions imposed by Taiwan cannot be a natural basis for reviewing the trademark’s inability to be used in mainland China. Evidence 3 is my country’s management measures for the representative offices of foreign insurance institutions in China. This evidence was released on January 15, 2004, later than January 1, 2004, and the content of this evidence can only explain that the representative office cannot operate. Sexual activity does not necessarily mean that Cathay Financial Corporation cannot use the review trademark. In summary, the evidence submitted by Cathay Financial Corporation is insufficient to prove that the re-examination trademark had legitimate reasons for not using the re-examination trademark on designated services from January 2, 2001 to January 1, 2004.

Therefore, the Trademark Review and Adjudication Board decided in accordance with the provisions of Articles 44 and 49 of the Trademark Law of the People's Republic of China (referred to as the "Trademark Law"): Registrations for rental, real estate agency and real estate brokerage services are cancelled.

Cathay Financial Corporation was dissatisfied with the decision of the Trademark Review and Adjudication Board and filed an administrative lawsuit with the Beijing No. 1 Intermediate People’s Court within the statutory period, stating that it had The reexamined trademark cannot be used on "real estate leasing, real estate agency, real estate brokerage" services during the date. According to Article 39 of the "Regulations for the Implementation of the Trademark Law of the People's Republic of China" (referred to as the "Regulations for the Implementation of the Trademark Law") According to the provisions of the regulations, Cathay Financial Corporation’s failure to use the re-examination trademark during the aforementioned period constitutes a legitimate reason, and the registration of the re-examination trademark in the above-mentioned service items shall be maintained in accordance with the law. Therefore, we request the court to make a decision: we request the court to revoke the accused decision and order the defendant to make a new review decision.

The court of first instance held that Article 44 (4) of the Trademark Law stipulates that if a registered trademark has ceased to be used for three consecutive years, the Trademark Office shall order it to make corrections within a time limit or cancel its registered trademark. In this case, Cathay Financial Corporation clearly admitted that it did not use the re-examination trademark during the re-examination period, but believed that the reason was that its company's business scope was restricted by legal provisions, and submitted corresponding legal basis during the administrative stage and litigation stage. In this regard, the court held that: First of all, my country's mainland and Taiwan belong to different legal jurisdictions, and Taiwan's legal provisions on investment restrictions cannot be the natural basis and justification for the reexamination that the trademark cannot be used in my country's mainland. Secondly, the use of trademarks stipulated in Article 44 (4) of the Trademark Law refers to the commercial use of trademarks, including the use of trademarks on goods, commodity packaging or containers, and commodity transaction documents, or the use of trademarks on In advertising, exhibitions and other commercial activities. That is, the trademark can be used in a variety of ways, and it is not necessarily related to the company's business scope. Therefore, the restrictions on the business scope of the plaintiff company in mainland my country cannot be a valid reason for the reexamination of the inability to use the trademark.

In accordance with the provisions of Article 54, Item (1) of the Administrative Litigation Law of the People's Republic of China, the court of first instance made the following judgment: uphold the decision of the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce. Pingzi [2011] No. 16562 on the review decision of “Cathay Life” trademark cancellation No. 963862.

Cathay Financial Corporation was dissatisfied with the first-instance judgment and appealed to the Beijing Higher People’s Court.

Beijing Higher People’s Court held that Article 44(4) of the Trademark Law stipulates that if a registered trademark ceases to be used for three consecutive years, the Trademark Office shall order it to make corrections within a time limit or cancel its registered trademark. . Mainland my country and Taiwan belong to different legal jurisdictions. The legal provisions on investment restrictions in Taiwan do not constitute a valid reason for the reexamination of trademarks that cannot be used in mainland my country. Article 3 of the "Regulations for the Implementation of the Trademark Law" stipulates: "The use of trademarks as referred to in the Trademark Law and these Regulations includes the use of trademarks on commodities, commodity packaging or containers and commodity transaction documents, or the use of trademarks for advertising, exhibitions and In other commercial activities. "In commercial activities, the use of trademarks to indicate the source of goods and enable the relevant public to distinguish different market entities that provide goods are all ways of using trademarks. Therefore, use in the sense of trademark law has no direct relationship with the company's business scope. Therefore, the court of first instance found that the restrictions on the company's business scope under the Insurance Law cannot be a valid reason for the review of the inability to use the trademark. Cathay Financial's grounds of appeal lacked basis and the court would not support it.

In accordance with the provisions of Article 61 (1) of the Administrative Litigation Law of the People's Republic of China, the Beijing Higher People's Court made the following judgment: the appeal was dismissed and the original judgment was upheld.

3. Case Analysis

The focus of this case is: how to understand and determine whether the suspension of use of a registered trademark for three consecutive years is a legitimate reason. Article 44 (4) of the Trademark Law stipulates that if a registered trademark is used and the use is stopped for three consecutive years, the Trademark Office shall order it to make corrections within a time limit or cancel the registered trademark. According to the provisions of Paragraph 2 of Article 39 of the Regulations for the Implementation of the Trademark Law, the situation specified in Paragraph 4 of Article 44 of the Trademark Law is constituted. However, if there are justifiable reasons, the registration may not be revoked. trademark.

(1) Different jurisdictions apply their own laws. This is one of the basic principles for the application of laws in each country and region.

Mainland my country and Taiwan belong to different legal jurisdictions. The legal provisions of Taiwan should only be binding on Taiwan, but not on the mainland. Taiwanese companies entering the mainland will The laws of mainland China should be strictly abided by. In this case, the plaintiff’s investment scope and business restrictions stem from the provisions of Taiwanese law. They are not binding in mainland my country, and they certainly cannot constitute a legitimate reason why the plaintiff’s trademark cannot be used in the mainland.

(2) Understanding of what constitutes legitimate reasons for discontinuing use for three consecutive years.

The "Trademark Trial Standards" define legitimate reasons for non-use as "force majeure; cessation of use due to government policy restrictions; cessation of use due to bankruptcy liquidation; other legitimate reasons that cannot be attributed to the trademark registrant. "Article 20 of the "Opinions on Several Issues Concerning the Trial of Administrative Cases of Trademark Authorization and Confirmation" issued by the Supreme People's Court in 2010 (referred to as "Several Opinions") stipulates: "If the trademark owner fails due to force majeure, policy restrictions, bankruptcy, etc. Objective reasons include failure to actually use the registered trademark or stopping use, or if the trademark owner has a genuine intention to use the trademark and has the necessary preparations for actual use, but has not actually used the registered trademark due to other objective reasons, it can be determined that there is a legitimate reason. "It can be seen that the "Several Opinions" have added the circumstances of "failure to actually use" and "not yet actually used", and take into account the trademark owner's true intention to use, which is more beneficial at both the legislative and judicial levels. Protect the interests of trademark owners. It is easy for everyone to understand force majeure and bankruptcy liquidation. As for the issue of policy restrictions, we believe that it mainly refers to the adoption of access principles for a certain industry, resulting in trademark rights holders needing to wait for approval procedures.

As for this case specifically, Cathay Financial Corporation cannot engage in "business activities" in mainland China according to law, making it unable to use the review trademark on its "real estate leasing, real estate agency, and real estate brokerage" services. prerequisites. It is precisely because of the same reason that the law explicitly prohibits this. Cathay Financial Corporation’s inability to use the reexamination trademark on the aforementioned services does not fall within the policy restrictions that require waiting for relevant administrative approvals. It itself cannot meet the requirements specified in the "Several Opinions" conditions of intended use. Moreover, Article 3 of the "Regulations for the Implementation of the Trademark Law" and Article 20 of the "Several Opinions" provide various provisions on the forms of trademark use, and neither of them limits the use of the trademark by the trademark owner. Therefore, the court found that Cathay Financial Corporation’s defense that it had legitimate reasons for not using the review trademark in its “real estate leasing, real estate agency, and real estate brokerage” service items was not established.

(3) The registration and use of a trademark are not necessarily related to the business scope of the trademark owner.

First of all, Article 15 of the "Regulations on the Registration and Management of Enterprise Business Scope" (Order No. 12 of the State Administration for Industry and Commerce) stipulates that if an enterprise fails to obtain approval or registration, or violates Article 14 of these regulations, , those who engage in licensed business operations shall be investigated and punished by the enterprise registration authority in accordance with the "Measures for the Investigation, Punishment and Banning of Unlicensed Operations". It can be interpreted from this that in mainland my country, companies operating beyond their scope are not always investigated and punished as unlicensed operations, and the penalties for companies operating beyond their scope are reduced. Secondly, the Trademark Law, the Implementing Rules of the Trademark Law and relevant laws, regulations or rules do not stipulate that enterprises applying for registered trademarks should be consistent with their business scope. In other words, if an enterprise is required to apply for a registered trademark consistent with its business scope, the defensive trademark registered by the enterprise will not be able to survive and develop.

However, any form of trademark use must comply with the requirements of "legitimate" use. "Legal" use generally means that it must not violate laws on trademark system regulations or other laws on corporate business behavior.

In this case, the plaintiff’s inability to engage in services to review the designated use of the trademark is a special provision made by the law based on its nature, and violations of legal provisions cannot constitute policy restrictions on the suspension of use of the trademark, and certainly do not fall within the scope of the policy restrictions. Justification.