1. Basic situation

Shenzhen Off-Road Investment Management Co., Ltd. (hereinafter referred to as "Off-road Company") filed a lawsuit against trademark No. 3477547 "HERO JOB WEEKLY" (hereinafter referred to as " "Cancel the trademark") submitted a cancellation application on the grounds that the trademark has not been used for three consecutive years. The Trademark Office and the Trademark Review and Adjudication Board determined that the evidence submitted by the registrant was sufficient to prove the use of the canceled trademark, and maintained the registration of the canceled trademark. The canceled trademark was applied for registration by Guangdong Southern Metropolis Media Co., Ltd. (hereinafter referred to as "Southern Metropolis Media Company") on March 7, 2003, in Category 35 "Advertising" and other service items.

In the ruling issued by the Trademark Review and Adjudication Board, the Trademark Review and Adjudication Board determined that: The authorization letter and other evidence submitted by Southern Metropolis Media Company can prove that it authorized its affiliates to use the canceled trademark for various activities in the automotive industry. ; Event contracts, promotional posters and other evidence can corroborate each other, proving that the canceled trademark was used for publicity in auto show activities. Auto show activities and advertising and other services constitute the same or similar services, so the registration of the canceled trademark is maintained.

The Off-Road Company was dissatisfied and filed a lawsuit with the Beijing Intellectual Property Court. The case was heard by the Beijing Intellectual Property Court and the Beijing Higher People's Court, and it was determined that the use evidence submitted by the registrant was insufficient to prove that the canceled trademark had been used openly, truly, legally and effectively in the approved service items within the specified period. , thus canceling the registered trademark No. 3477547.

2. Main practices and experiences

The "withdrawal of three" system is a very important provision in the Trademark Law: if a registered trademark is not used for three consecutive years without justifiable reasons, any unit Or an individual can apply to the Trademark Office to cancel the registered trademark. By revoking trademarks that have been idle for a long time and have actually withdrawn from the market, urging relevant rights holders to actively exercise their rights will help prevent limited trademark resources from being idle and wasted, and protect real trademark users and value creators.

The use of a trademark should be in open, genuine and legal commercial activities, and it needs to be used on the goods and services designated by the trademark, so that the trademark can play a role in distinguishing the source of the goods and services. Tongshuo believes that to determine whether a trademark is actually used, it is necessary to determine whether the trademark registrant has real intention to use and actual use behavior. If there is no actual use, but only transfer, license, etc., or it is only to maintain the existence of the registered trademark However, one-time or very small symbolic use shall not be deemed to constitute actual use of the trademark.

In practice, there are certain differences between the standards for trademark use determined by the Trademark Office and the Trademark Review and Adjudication Board at the administrative stage and the standards determined by the courts at the litigation stage. In the administrative stage, it is often emphasized that "full consideration is given to the actual situation of the enterprise's business activities, habits of trademark use, differences in trademark use methods and other practical conditions", and the requirements for evidence are relatively loose; while in the litigation stage, the court is more strict about the chain of evidence. There are relatively strict requirements for integrity, and those with only a small amount of self-made evidence will generally not be recognized.

This case mainly involves the following focuses:

(1) Requirements for the formation of evidence chain

Whether it is in the administrative stage or the litigation stage, commercial Both the review committee and the two-instance courts followed the principle that the evidence of use of the trademark being reviewed should form a chain of evidence. If there is only a contract but no evidence of performance such as invoices, this alone should not be used to determine that the trademark has been cancelled.

(2) Identification of self-made evidence

As typical self-made evidence, posters and other evidence are usually difficult to prove when they were made in the absence of other evidence to corroborate each other. During the administrative stage, the Trademark Review and Adjudication Board recognized the validity of these posters and regarded them as evidence of the performance of the contract and other evidence, and thus determined that Southern Metropolis Media Company had entrusted others to carry out activities such as auto shows and used the canceled trademark. In fact, such self-made evidence of unknown origin and unable to prove whether it has been put into commercial circulation can be easily counterfeited at a later stage, and its authenticity should not be recognized. Interpro's view was supported by the courts of both instances during the litigation stage. Both courts determined that such posters could not reflect the time of printing and use, and were self-made evidence. After comprehensive consideration, they were not admissible.

(3) Identification of evidence that cannot reflect the time of formation

In trademark cancellation cases, the time of formation of evidence directly affects whether the evidence can prove that the cancellation of the trademark occurred within the specified time period use within.

Therefore, both the Trademark Review and Adjudication Board and the Court of First Instance made a judgment that the web page evidence submitted by Southern Metropolis Media Company did not reflect the time of formation.

(4) Determination of a license contract that cannot reflect the specific information of the trademark

In the "Trademark Authorization Letter" submitted by Southern Metropolis Media Company, the application for registration of the trademark was not stated No., approved use category and other information, but only a picture of the trademark similar to the canceled trademark is attached. During the administrative stage, the Trademark Review and Adjudication Board determined that the evidence could prove that Southern Metropolis Media Company authorized Southern Metropolis Daily Company to use the canceled trademark. This determination was overturned during the litigation stage. During the authorized use of a trademark, the right holder should pay attention to clearly stating the specific information of the authorized trademark and file it in a timely manner to avoid disputes.

Of course, the review of trademark use evidence should consider practical factors such as industry practices, but the proof of use should form a basic chain of evidence to prove that the use of the trademark does not only stay at the literal level such as licenses and contracts, but also at the legal level. It is through the production of evidence of contract performance that the trademark has entered the circulation field and plays the role of trademark identification. The use of evidence should be consistent with the authenticity and relevance of the evidence, and false, self-made evidence and irrelevant evidence should be excluded, so as to effectively maintain the effective operation of the "withdrawal of three" system.

3. Typical significance

The mastery of the identification standards of evidence used in "withdrawal of three" cases not only directly affects the survival of registered trademarks, but also affects the "withdrawal of three" system. social effect.

This case involves four main disputed issues. Among them, in terms of the requirements for the formation of evidence chains and the identification of evidence that cannot reflect the time of formation, the standards held by the adjudicating agencies during the review stage and the litigation stage are relatively consistent; The court's standards are relatively strict when it comes to identifying self-made evidence and licensing contracts that cannot reflect specific trademark information. These four main issues are all relatively typical issues in “withdrawal of three” cases. The similarities and differences in the standards held by the courts of second instance and the review stage have great implications for trademark practitioners and users of trademarks.